Appeal No. 2001-1651 Page 13
Application No. 09/238,972
As the expression itself implies, the purpose of
“incorporation by reference” is to make one document
become a part of another document by referring to the
former in the latter in such a manner that it is apparent that
the cited document is part of the referencing document as if
it were fully set out therein. …
We held in Lund that the mere statement that an application is a
“continuation-in-part” does not do that.
Accordingly, we are not persuaded by appellant’s argument that simply reciting
the continuing data on the first page of the specification incorporates the
disclosure of the prior applications by reference.
We agree with appellant’s argument (Brief, page 10), that a later filed
application is entitled to the benefit of the filing date of an earlier filed application
with regard to the subject matter that is common to both applications. However,
as the examiner points out (Answer, page 9), “there was no common subject
matter, particularly antisense oligos in application 08/187,634 [now U.S. Patent
5,866,123 (‘123)], as noted by appellant[1], thereby barring applicants from
priority benefit to … [MacLeod] which was not copending with the current
application.”
Similar to the facts in this case, our appellate reviewing court explained in
In re Chu, 66 F.3d 292, 297, 36 USPQ2d 1089, 1093 (Fed. Cir. 1995):
It is elementary patent law that a patent application is entitled to the
benefit of the filing date of an earlier filed application only if the
disclosure of the earlier application provides support for the claims
of the later application, as required by 35 U.S.C. Section 112. 35
U.S.C. Section 120. Mendenhall v. Cedarapids Inc., 5 F.3d 1557,
1566, 28 USPQ2d 1081, 1088-89 (Fed. Cir. 1993) (“A patentee
cannot obtain the benefit of the filing date of an earlier application
where the claims in issue could not have been made in the earlier
application.”), cert. denied, 114 S. Ct. 1540 (1994); see also Litton
1 According to appellant (Brief, page 10), “U.S. Patent Application Ser. No. 08/187,634 does not
discuss antisense oligonucleotides directed against CAT2 mRNA….”
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