Appeal No. 2001-1651 Page 12
Application No. 09/238,972
THE REJECTION UNDER 35 U.S.C. § 102:
As we understand appellant’s claim grouping, claim 3 stands or falls
alone, and claim 17 stands or falls together with claim 16. Brief, pages 6-7.
Appellant, however, fails to separately argue the claims as required by 37 CFR
§ 1.192(c)(7) (1999). Accordingly, claims 3, 16 and 17 will stand or fall together.
Since all claims stand or fall together, we limit our discussion to representative
independent claim 16. 37 CFR § 1.192(c)(7) (1999).
According to the examiner (Answer, page 4), “MacLeod discloses the
CAT2 cDNA double stranded sequence identified as SEQ ID NO: 5, … and also
discloses that antisense sequences can be used to inhibit CAT2 translation….”
In response, appellant points out that the application involved in this appeal is a
continuation-in-part of 08/187,634, which is a continuation-in-part of MacLeod.
According to appellant, by reciting the continuity data on the first line of the
specification in the instant application, the instant application properly
incorporates by reference the earlier application. However, as set forth in In re
De Seversky, 474 F.2d 671, 674, 164 USPQ 144, 146-47 (CCPA 1973):
the statement that an application is a continuation-in-part, or a
continuation, or a division, or in part a continuation of another
application is in a broad sense a “reference” to the earlier
application, but a mere reference to another application, or patent,
or publication is not an incorporation of anything therein into the
application containing such reference for the purposes of the
disclosure required by 35 U.S.C. [§] 112. Likewise it does not
serve to bring a disclosure within the requirements of 35 U.S.C.
[§] 120 so as to give a later application the benefit of the filing date
of an earlier application. The later application must itself contain
the necessary disclosure. As we said in … [In re Lund, 376 F.2d
982, 989, 153 USPQ 625, 631 (CCPA 1967)],
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