2126
`
`MANUAL OF PATENT EXAMINING PROCEDURE
`
`590 F.2d 911, 200 USPQ 500 (CCPA 1979). See
`MPEP § 2121.04 for more information on prior art
`drawings as “enabled disclosures.”
`
`PROPORTIONS OF FEATURES IN A DRAW-
`ING ARE NOT EVIDENCE OF ACTUAL PRO-
`PORTIONS WHEN DRAWINGS ARE NOT TO
`SCALE
`
`When the reference does not disclose that the draw-
`ings are to scale and is silent as to dimensions, argu-
`ments based on measurement of the drawing features
`are of little value. See Hockerson-Halberstadt, Inc. v.
`Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d
`1487, 1491 (Fed. Cir. 2000) (The disclosure gave no
`indication that the drawings were drawn to scale. “[I]t
`is well established that patent drawings do not define
`the precise proportions of the elements and may not
`be relied on to show particular sizes if the specifica-
`tion is completely silent on the issue.”). However, the
`description of the article pictured can be relied on, in
`combination with the drawings, for what they would
`reasonably teach one of ordinary skill in the art. In re
`Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977)
`(“We disagree with the Solicitor’s conclusion, reached
`by a comparison of the relative dimensions of appel-
`lant’s and Bauer’s drawing figures, that Bauer ‘clearly
`points to the use of a chime length of roughly 1/2 to 1
`inch for a whiskey barrel.’ This ignores the fact that
`Bauer does not disclose that his drawings are to scale.
`... However, we agree with the Solicitor that Bauer’s
`teaching that whiskey losses are influenced by the dis-
`tance the liquor needs to ‘traverse the pores of the
`wood’ (albeit in reference to the thickness of the bar-
`relhead)” would have suggested the desirability of an
`increased chime length to one of ordinary skill in the
`art bent on further reducing whiskey losses.” 569 F.2d
`at 1127, 193 USPQ at 335-36.)
`
`2126 Availability of a Document as a
`“Patent” for Purposes of Rejection
`Under 35 U.S.C. 102(a), (b), and (d)
`
`THE NAME “PATENT” ALONE DOES NOT
`MAKE A DOCUMENT AVAILABLE AS A
`PRIOR ART PATENT UNDER 35 U.S.C. 102(a)
`or (b)
`
`What a foreign country designates to be a patent
`may not be a patent for purposes of rejection under
`35 U.S.C. 102(a) and (b); it is the substance of the
`rights conferred and the way information within the
`“patent” is controlled that is determinative. In re
`Ekenstam, 256 F.2d 321, 118 USPQ 349 (CCPA
`1958). See the next paragraph for further explanation
`with respect to when a document can be applied in a
`rejection as a “patent.” See MPEP § 2135.01 for a
`further discussion of the use of “patents” in 35 U.S.C.
`102(d) rejections.
`
`A SECRET PATENT IS NOT AVAILABLE AS A
`REFERENCE UNDER 35 U.S.C. 102(a) or (b)
`UNTIL IT IS AVAILABLE TO THE PUBLIC
`BUT IT MAY BE AVAILABLE UNDER 35 U.S.C.
`102(d) AS OF GRANT DATE
`
`Secret patents are defined as patents which are
`insufficiently accessible to the public to constitute
`“printed publications.” Decisions on the issue of what
`is sufficiently accessible to be a “printed publication”
`are located in MPEP § 2128 - § 2128.01.
`Even if a patent grants an exclusionary right (is
`enforceable), it is not available as prior art under
`35 U.S.C. 102(a) or (b) if it is secret or private. In re
`Carlson, 983 F.2d 1032, 1037, 25 USPQ2d 1207,
`1211 (Fed. Cir. 1992). The document must be at least
`minimally available to the public to constitute prior
`art. The patent is sufficiently available to the public
`for the purposes of 35 U.S.C. 102(a) or (b) if it is laid
`open for public inspection or disseminated in printed
`form. See, e.g., In re Carlson, 938 F.2d at 1037,
`25 USPQ2d
`at
`1211
`(“We
`recognize
`that
`Geschmacksmuster on display for public view in
`remote cities in a far-away land may create a burden
`of discovery for one without the time, desire, or
`resources to journey there in person or by agent to
`observe that which was registered under German law.
`Such a burden, however, is by law imposed upon the
`hypothetical person of ordinary skill in the art who is
`charged with knowledge of all contents of the relevant
`prior art.”). The date that the patent is made available
`to the public is the date it is available as a 35 U.S.C.
`102(a) or (b) reference. In re Ekenstam, 256 F.2d 321,
`118 USPQ 349 (CCPA 1958). But a period of secrecy
`after granting the patent has been held to have no
`effect in connection with 35 U.S.C. 102(d). These pat-
`ents are usable in rejections under 35 U.S.C. 102(d)
`
`August 2001
`
`2100-62
`
`

`

`PATENTABILITY
`
`2126.01
`
`as of the date patent rights are granted. In re Katha-
`wala, 9 F.3d 942, 28 USPQ2d 1789 (Fed. Cir. 1993).
`See MPEP § 2135 - § 2135.01 for more information
`on 35 U.S.C. 102(d).
`
`2126.01 Date of Availability of a Patent
`as a Reference
`
`DATE FOREIGN PATENT IS EFFECTIVE AS A
`REFERENCE
`IS USUALLY THE DATE
`PATENT RIGHTS ARE FORMALLY AWARDED
`TO ITS APPLICANT
`
`The date the patent is available as a reference is
`generally the date that the patent becomes enforce-
`able. This date is the date the sovereign formally
`bestows patents rights to the applicant. In re Monks,
`588 F.2d 308, 200 USPQ 129 (CCPA 1978). There is
`an exception to this rule when the patent is secret as of
`the date the rights are awarded. In re Ekenstam,
`256 F.2d 321, 118 USPQ 349 (CCPA 1958).
`Note that MPEP § 901.05 summarizes in tabular
`form dates of patenting for many foreign patents.
`Chisum, Patents § 3.06[4] n.2 gives a good summary
`of decisions which specify reference availability dates
`for specific classes of foreign patents. A copy of
`Chisum is kept in the law library of the Solicitor’s
`Office and in the Lutrelle F. Parker, Sr., Memorial
`Law Library located in CPK1-520.
`
`2126.02 Scope of Reference’s Disclosure
`Which Can Be Used to Reject
`Claims When the Reference Is a
`“Patent” but Not a “Publication”
`
`OFTEN UNCLAIMED DETAILS FOUND IN
`THE PATENT SPECIFICATION CAN BE RE-
`LIED ON EVEN IF PATENT IS SECRET
`
`When the patented document is used as a patent and
`not as a publication, the examiner is not restricted to
`the information conveyed by the patent claims but
`may use any information provided in the specification
`which relates to the subject matter of the patented
`claims when making a rejection under 35 U.S.C.
`102(a), (b) or (d). Ex parte Ovist, 152 USPQ 709, 710
`(Bd. App. 1963) (The claim of an Italian patent was
`generic and thus embraced the species disclosed in the
`examples, the Board added that the entire specifica-
`
`tion was germane to the claimed invention and upheld
`the examiner’s 35 U.S.C. 102(b) rejection.); In re
`Kathawala, 9 F.3d 942, 28 USPQ2d 1785 (Fed. Cir.
`1993) (The claims at issue where rejected under
`35 U.S.C. 102(d) by applicant’s own parent applica-
`tions in Greece and Spain. The applicant argued that
`the “invention ... patented in Spain was not the same
`‘invention’ claimed in the U.S. application because
`the Spanish patent claimed processes for making
`[compounds for inhibition of cholesterol biosynthesis]
`and claims 1 and 2 were directed to the compounds
`themselves.” 9 F.3d at 944, 28 USPQ2d at 1786. The
`Federal Circuit held that “when an applicant files a
`foreign application fully disclosing his invention and
`having the potential to claim his invention in a num-
`ber of ways, the reference in section 102(d) to ‘inven-
`tion ... patented’ necessarily includes all disclosed
`aspects of
`the
`invention.” 9 F.3d at 945-46,
`28 USPQ2d at 1789.)
`In re Fuge, 272 F.2d 954, 957, 124 USPQ 105, 107
`(CCPA 1959), does not conflict with the above deci-
`sions. This decision simply states “that, at the least,
`the scope of the patent embraces everything included
`in the [claim].” (emphasis added).
`Note that the courts have interpreted the phrase
`“invention ... patented” in 102(a), (b), and (d) the
`same way and have cited decisions without regard to
`which of these subsections of 35 U.S.C. 102 was at
`issue in the particular case at hand. Therefore, it does
`not seem to matter to which subsection of 102 the
`cases are directed; the court decisions are interchange-
`able as to this issue.
`
`2127 Domestic and Foreign Patent
` Applications as Prior Art
`
`I.
`
`ABANDONED APPLICATIONS, INCLUD-
`ING PROVISIONAL APPLICATIONS
`
`Abandoned Applications Disclosed to the Public
`Can Be Used as Prior Art
`
`“An abandoned patent application may become evi-
`dence of prior art only when it has been appropriately
`disclosed, as, for example, when the abandoned patent
`[application] is reference[d] in the disclosure of
`another patent, in a publication, or by voluntary dis-
`closure under [fomer Defensive Publication rule]
`37 CFR 1.139.” Lee Pharmaceutical v. Kreps,
`
`2100-63
`
`August 2001
`
`