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ARTICLE · 21 MAY 2025

Is It Prior Art? Check The Provisional Application!

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This Federal Circuit Opinion analyzed collateral estoppel and the extent to which the non-provisional document would benefit from the provisional application's priority date, as it relates to Pre-AIA 35 U.S.C. § 102(e).

United StatesIntellectual Property
Takuma Nishimura
Takuma Nishimura
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This Federal Circuit Opinion analyzed collateral estoppel and the extent to which the non-provisional document would benefit from the provisional application's priority date, as it relates to Pre-AIA 35 U.S.C. § 102(e).

Background

U.S. Patent Application No. 11/005,678 ("'678 application"), filed on December 7, 2004 that claims priority to a provisional application filed on July 28, 2000, is directed to logistic systems and methods for transportation of goods that connect and share customer order information between various shippers across different transportation modes. The Examiner rejected the '678 application under pre-AIA 35 U.S.C. § 102(e) and 35 U.S.C. § 103. Specifically, claims 1, 2, 8, 10-13, and 24-25 were rejected as anticipated under pre-AIA 35 U.S.C. § 102(e) by U.S. Patent Application Publication No. 2002/0049622 A1 ("Lettich"), which was filed April 26, 2001 and published on April 25, 2002 , and claims 3, 5-7, 9, 15-20, and 22 were rejected as

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