Appeal No. 1998-2598
Application No. 08/549,078
in-part applications in a chain of priority under 35 U.S.C. § 120, there must be a
determination with respect to what effect the presentation of new matter has in the patent’s
chain of priority -- whether the patent disclosure represents “secret prior art” as to the
application at issue, and is thus not effective as a reference.
If...[the USPTO] wishes to utilize against an applicant a part of that patent
disclosure found in an application filed earlier than the date of the application
which became the patent, it must demonstrate that the earlier-filed
application contains §§120/112 support for the invention claimed in the
reference patent.
Wertheim, 646 F.2d at 537, 209 USPQ at 564.
The determinative question is whether the invention claimed in the patent finds a
supporting disclosure, in the patent’s application in question, in compliance with section
112, as required by section 120, so at to entitle that invention as “prior art” to the filing date
of the patent’s application. See id. The only date a patent has under section 102(e)(2) is
the filing date of the application on which the patent issued. “Any earlier U.S. filing date for
the patent necessarily depends on further compliance with § § 120 and 112.” Wertheim,
646 F.2d at 538, 209 USPQ at 565.
Thus, under 35 U.S.C. § 102(e)(2), the effective date of Butts ‘231 as a reference is
May 17, 1994, the filing date of the application which matured into U.S. Patent 5,452,531.
If we presume the patent’s claims of priority under 35 U.S.C. § 120 to be correct, we can,
without further evidence, presume that the effective filing date of Butts ‘231 is May 10,
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