Appeal 2007-0417
Application 10/796,814
result, i.e., reducing the formation of biofilm deposits, would necessarily or
inherently occur in the method taught by Pitts.
The Appellants contend that the present application is entitled to the
benefit of the filing date of Pitts under 35 U.S.C. § 120, thus removing Pitts
as a reference against the claims on appeal (Br. 4-6). According to the
Appellants (Reply Br. 2-3), this entitlement is supported by the Examiner’s
admission that Pitts provides inherent written descriptive support for the
missing claimed preamble limitation, i.e., reducing the formation of biofilm
deposits.
The Examiner has recognized (Answer 3-4) that:
[I]nstant application SN 10/796,814 is a continuation of
[application] SN 10/047,493 (abandoned), which is a
continuation-in-part of [application] SN 09/416,255
(abandoned), which is a continuation-in-part of [application]
SN 09/167,115 (abandoned), which is a continuation-in-part or
[sic] [application] SN 08/779,819(issued as patent number
5,817,224); which is a continuation-in-part of [application] SN
08/197,154 (issued as patent number 5,591,317[Pitts]).
However, the Examiner has taken the position that the present application is
not entitled to the benefit of the filing date of Pitts since it and the other
applications in the priority chain do not expressly describe reducing the
formation of biofilm deposits within the meaning of 35 U.S.C. § 112, first
paragraph (Answer 4). In other words, the Examiner has determined that
Pitts is available as “prior art” within the meaning of 35 U.S.C. §102(b)
contrary to the Appellants’ contention (id.).
Danek, Inc., 424 F.3d 1293, 1320-21 n.3, 76 USPQ2d 1662, 1683 n.3 (Fed.
Cir. 2005). Thus, we need not consider this argument.
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