Appeal No. 2003-0949
Application 09/164,517
the disclosure of the Keith patent shows that the invention
claimed in Boliek is not supported by the disclosure of the Keith
patent. Therefore, we do not get to the step of reviewing where
the Boliek limitations are found in Keith. “[P]ortions of the
original disclosure cannot be found ‘carried over’ for the
purpose of awarding filing dates, unless that disclosure
constituted a full, clear, concise and exact description in
accordance with § 112, first paragraph, of the invention claimed
in the reference patent, else the application could not have
matured into a patent, within the Milburn § 102(e) rationale, to
be ‘prior art’ under § 103.” Ex parte Ebata, 19 USPQ2d 1952,
1955 (Bd. Pat. App. & Int.).
Other Issues
At page 8 of the Examiner’s Answer, there is an extensive
discussion of where limitations of claim 1 can be found in the
Keith patent (US 5,966,465). We have not decided the issue of
the applicability of the Keith patent to a rejection under
35 U.S.C. § 103, as that issue is not before us.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007