Appeal 2007-0417
Application 10/796,814
Lemelson v. TRW, Inc., 760 F.2d 1254, 1266, 225 USPQ 697, 706 (Fed. Cir.
1985)(citation omitted). In other words, the Appellants have the burden of
establishing that each application in the chain either inherently, implicitly or
expressly provides written descriptive support for the claimed subject matter
of the present application within the meaning of 35 U.S.C. § 112, first
paragraph, in order to obtain the filing date of Pitts. See also In re Ziegler,
992 F.2d 1197, 1200, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) (The burden
of establishing entitlement to the filing date of a previously filed foreign
application is on the applicant.); Langer v. Kaufman, 465 F.2d 915, 913,
175 USPQ 172, 174 (CCPA 1972) (“To prove inherency, the burden is on
appellants to show that the ‘necessary and only reasonable construction to be
given the disclosure by one skilled in the art is one which will lend clear
support to….[this] positive limitation…”).
Here, the Appellants may have established that Pitts inherently
describes the subject matter claimed in the present application within the
meaning of 35 U.S.C. § 112, first paragraph. But, the Appellants have not
demonstrated that each application in the chain inherently describes the
subject matter claimed in the present application or contains Pitts’ inherent
disclosure relied upon by the Examiner (Br. 4-6 and Reply Br. 2-3). The
Appellants simply have not identified any written description in each
intervening application in the chain that satisfies the written description
requirement of the first paragraph of § 112. As such, we determine, on this
record, the Appellants have not shown that “there has been [a] ‘continuing
disclosure [of the claimed invention] through the chain of applications,
without hiatus’” as required by Lemelson, supra. Accordingly, we concur
with the Examiner that the subject matter claimed in the present application
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