[The phrase] "an application filed" in § 135(b)(2) [includes] the possibility of claiming benefit under § 120 to an earlier effective filing date.
On July 11, 2012, in Loughlin v. Ling, the U.S. Court of Appeals for the Federal Circuit (Rader, Lourie,* Moore) affirmed the USPTO Board of Patent Appeals and Interferences decision canceling claim 1 of U.S. Patent 7,434,426, which related to multiple function locks, pursuant to Loughlin's request for adverse judgment in light of the Board's holding regarding 35 U.S.C. § 135(b)(2) and 35 U.S.C. § 120. The Federal Circuit stated:
We agree with Ling that the Board correctly interpreted § 135(b)(2) in view of the plain language of that statute and the benefit provision of § 120. The first sentence of § 120 permits an application to claim the benefit of an earlier filing date, such that the application is treated as having been effectively filed on the earlier date. The statute provides in relevant part: An application for patent for an invention disclosed in the manner provided by section 112(a) . . . in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application . . . . Provided the criteria in § 120 are met, applications "shall," without exception, receive the benefit of the earlier filing date. The statute does not limit its effect to only certain provisions under the patent laws. As our predecessor court explained, "[n]othing in § 120 limits its application to any specific grounds for rejection . . . ."
The broad applicability of § 120 is illustrated in the context of 35 U.S.C. § 102. Subsections (b), (d), and (e) of § 102 refer to the filing of an "application" but do not explicitly reference § 120. Yet, as Loughlin concedes, § 120 applies to those subsections, permitting applicants to antedate prior art by claiming the benefit of an earlier filing date.
Loughlin offers no convincing reason why the priority benefit under § 120 should not apply to "an application filed" under § 135(b)(2). At most, Loughlin asserts that the Board erred by construing § 135(b)(2) and § 120 in pari materia. As the Supreme Court has explained, however, "[a] party seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one." In this case, as Ling's '404 application was entitled under § 120 to the benefit of the '413 application for the subject matter of claim 31, it was "an application" for purposes of § 135(b)(2) as well. Ling was therefore entitled to avail himself of § 120 in overcoming the bar set forth in § 135(b)(2).
Loughlin argues that § 135(b)(2) is a "staleness" provision requiring a party who wishes to provoke an interference to do so in a timely manner, so that Ling, who waited more than two years after Loughlin's application was published to file his application, should not benefit from § 120. We recognize the force of Loughlin's point about timeliness, but it cannot prevail in light of § 120's granting of priority benefit to any application meeting its requirements, which includes Ling's application. Bolstering our conclusion is the fact that the Board has consistently interpreted "an application filed" in § 135(b)(2) as including the benefit provision of § 120.
Accordingly, the Board correctly interpreted "an application filed" in § 135(b)(2) as including the possibility of claiming benefit under § 120 to an earlier effective filing date. It is not disputed that Ling's '404 application is entitled to benefit under § 120. As the Board correctly held, Ling was not barred by § 135(b)(2) from copying claims from Loughlin's published '624 application. Because that is the sole issue raised in Loughlin's appeal, we affirm the Board's judgment in favor of Ling.
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