In Re Hilmer

359 F.2d 859 (1966)

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Nature of the Case

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Facts

P filed an application. An interference was filed by Habicht. The earliest date asserted by Ps for their invention is their German filing date, July 31, 1957, which, is a few months later than Habicht's priority date of January 24, 1957. After termination of the interference, the examiner rejected the claims in view of the secondary reference which renders them obvious to one of ordinary skill in the art. P appealed to the board contending as follows. P stated that its German application was filed subsequent to the Swiss filing date [of Habicht] but prior to the U.S. filing date of the Habicht application. P maintains that the Habicht disclosure cannot be utilized as anticipatory in view of Section 119 which is entitled 'Benefit of Earlier Filing Date in Foreign Countries: Right of Priority.' This section defines the rights of foreign applicants and more specifically defines those rights with respect to dates to which they are entitled if this same privilege is awarded to citizens of the United States. There is no question that Section 119 only deals with 'right of priority.' The section does not provide for the use of a U.S. patent as an anticipatory reference as of its foreign filing date. This interpretation of Section 119 is also set forth in the Manual of Patent Examining Procedure (Section 715.01). P claims that the interference only decided the priority of the interference issue [i.e. the count]; there was no decision made nor was there any attempt to decide who was the inventor of the disclosure. The board affirmed the rejection. Thus, Habicht was entitled to Switzerland application’s filing date, which predated P’s priority date. P appealed.