Appeal No. 2002-0867
Application No. 08/738,659
to harmonize -- nor does it even address -- the evidence that supports a more
expansive definition for the term; e.g., the technical dictionary definitions we have
previously noted.
Naugle
U.S. Patent 5,715,393 (“Naugle,”) filed Jun. 21, 1995, issued Feb. 3, 1998, has
been cited as a reference by appellant during prosecution of the instant application.
(See Paper No. 39; filed May 23, 2001.) We will not take the filing of the IDS as an
unrebuttable admission that Naugle is prior art with respect to appellant. However, in
the event of further prosecution, appellant should clarify the status of Naugle with
respect to this application.
Moreover, although Naugle is not a reference under 35 U.S.C. § 102, we note
that the patent is a continuation-in-part of an application filed August 16, 1993, prior to
appellant’s claimed priority date of June 5, 1995. The earlier-filed application (106,733),
according to USPTO records, was abandoned as part of a file-wrapper-continuation of
the application that matured into the Naugle patent.
For reasons set forth in In re Wertheim, 646 F.2d 527, 531-39, 209 USPQ 554,
559-66 (CCPA 1981), when a patent disclosure relies on one or more continuation-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
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