Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ALBAN ALBERT, PIERRE COURBAT AND ANDRE WEITH
Appeal No. 561-99
September 14, 1984
Application for Patent filed August 28, 1980, Serial No. 182,169, a Division of Serial No. 962,743 filed November 21, 1978, now Patent No. 4,255,336. O-Substituted Derivatives of (+)-Cyanidan-3-o1.
Michael W. Glynn et al. for appellants
Primary Examiner--Nicky Chan
Before Goldstein, Pellman and Winters
This appeal is from the examiner's final rejection of claims 4 to 7 and 34. Claims 8 to 25 and 31 to 33 have been withdrawn from further consideration by the examiner under 37 C.F.R. 1.142(b). There are no allowed claims.
Illustrative claim 6 is reproduced below.
6. (+) 3-0-methyl-cyanidan-3-o1.
The sole reference relied on by the examiner on appeal is:
Cetta et al. (Cetta), "Influence of Flavonoid-Copper Complexes on Cross Linking in Elastin," The Italian Journal of Biochemistry, 26(4), (1977), pp. 317-327.
Claims 4 to 7 and 34 have been finally rejected under 35 U.S.C. 102(a) or (b) and 35 U.S.C. 103 as being unpatentable over Cetta. We shall affirm the examiner's rejection of claim 7 under 35 U.S.C. 103 and the rejection of the remaining claims on appeal under 35 U.S.C. 102(a).
It is uncontroverted that the species of claim 6 is disclosed in the reference. Thus, all of the claims which read on that species are anticipated by the reference. Claim 7 clearly does not read on that species, but it has not been argued that it would have been unobvious from that species.
The sole controverted issue in this case is the availability of the reference under 35 U.S.C. 102(a) based on its publication date. The effective filing date of the claims on appeal is agreed to be November 25, 1977, based on an earlier filed Swiss application. The nominal publication date of the issue of the journal in which the reference article appears is July-August 1977. On the preface page of that volume of the journal, however, there appears the following statement: "Finito di stampare il 10 novembre 1977". Appellants assert, apparently correctly so, that this indicates that the volume in question was not printed until November 10, 1977, despite its nominal publication date. Even this date, however, would be effective under 35 U.S.C. 102(a). Appellants further assert that this issue of the journal was not mailed until November 22, 1977, and was not received by any subscribers until a date subsequent to November 25, 1977. If appellants' proof of these facts were adequate, the journal article would not be an effective reference.
Appellants have cited Protein Foundation, Inc. v. Brenner, 151 USPQ 561, as being relevant and controlling in the present situation. We agree with this much of appellants' position. That case clearly sets forth the proposition that the effective date of a printed publication is the date that it is received by the public and not the date that it is printed or even the date that it is mailed. In that case, however, the court apparently had before it evidence with respect to the delivery time of mail of the relevant class from which it was able to deduce that none of the copies mailed could have reached their destination by the critical date and therefore were not available to the public prior to that date. We find that we are not in the same position as the court in the cited case. There is no evidence of record as to the usual delivery period required for mail in Italy of the class used. Also, we agree with the examiner that the fact that several libraries, actually an unknown number, had not received copies by the critical date is not probative. A publication of the type at hand goes to many individual subscribers as well as academic and business institutions. The best evidence in the present case would of necessity issue from the Italian Post Office and the publisher of the journal setting forth the expected delay in delivery and the actual past experience.
*2 Appellants have attempted to shift the burden of proof on the issues discussed above to the examiner. The examiner met his burden of proof by setting forth the nominal publication date. This was not overcome by the apparent printing date pointed to by appellants. The Patent and Trademark Office is in no position to establish any thing beyond that. The burden is clearly upon appellants to disprove the prima facie publication date established by the examiner, and the unsworn, third-hand information presented in Paper No. 12 is clearly inadequate to meet that burden.
The decision of the examiner is affirmed.
Irving R. Pellman
Sherman D. Winters
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