Appeal No. 2002-0030 Page 12
Application No. 09/314,267
FRANKFORT, Administrative Patent Judge, additional views
My reading of Atmel Corporation v. Information Storage Devices, Inc., 198 F.3d
1374, 53 USPQ2d 1225 (Fed. Cir. 1999) reveals no indication that the Federal Circuit
intended to place any restriction on the use of a proper incorporation by reference to
supplement or complete appellant's disclosure concerning a "means plus function"
limitation. As set forth in MPEP § 608.01(p), the Commissioner/Director of the U.S.
Patent and Trademark Office has considerable discretion under the authority granted
him/her to determine what may or may not be incorporated by reference in a patent
application and to thereby insure that applications which issue as U.S. patents provide
the public with a complete patent disclosure which minimizes the public's burden to
search for and obtain copies of documents incorporated by reference which may not be
readily available. The Commissioner/Director has chosen to exercise that discretion
with regard to "essential material"8 by limiting any incorporation by reference to 1) a
U.S. patent, 2) a U.S. patent application publication, or 3) a pending U.S. patent
application.
Since appellant has, on page 6 of the specification, made reference to his
co-pending Application No. 09/276,666 for support regarding the structure
8 "Essential material" is defined in MPEP § 608.01 (p) as being that which is necessary to
(1) describe the claimed invention, (2) provide an enabling disclosure of the claimed invention, or
(3) describe the best mode (35 U.S.C. § 112).
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