Ex Parte Nguyen et al - Page 6
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Board of Patent Appeals and Interferences > 2006 > Ex Parte Nguyen et al - Page 6
Appeal No. 2006-2023 Page 6
Application No. 10/650,785
application and thus Mueller is not available as prior art under 35 U.S.C.
22. Other findings of fact follow below.
A. The issue
The dispositive question is whether the examiner was correct in
determining that Mueller qualifies as prior art. In order to resolve this question,
we must first determine if the examiner was correct in evaluating the effective
filing dates of each of claims 1-26.
Applicants are entitled to claim benefit of the filing date of an earlier application
for a later claimed invention under 35 U.S.C. § 120 if the earlier application discloses
the later claimed invention in the manner required by 35 U.S.C. § 112, first paragraph.
In re Chu, 66 F.3d 292, 272, 36 USPQ2d 1089, 1093 (Fed. Cir. 1995).
To satisfy the written description requirement under 35 U.S.C. § 112, first
paragraph, the disclosure of the application relied upon must have reasonably conveyed
to the skilled artisan that the inventor had possession at that time of the later claimed
subject matter. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
B. The examiner’s position
The examiner argues that in construing the limitation of ”removing treated water
from the process tank ‘through a membrane filter’” in the broadest reasonable manner
not inconsistent with the specification, the limitation at issue encompasses two possible
embodiments of the invention. In the first embodiment, a single membrane filter serves
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