Ex parte KATZ - Page 5




              Appeal No. 96-2366                                                                                           
              Application 08/076,824                                                                                       



                     Upon return of the application, the examiner should determine whether the                             
              declaration filed December 14, 1994, was timely as well as determine whether the                             
              required surcharge has been submitted.                                                                       


                                      Effective filing date of the claims on appeal                                        
                     It does not appear from this record that the examiner has determined the effective                    
              filing date of the claims on appeal.  This is especially important here since many of the                    
              parent applications listed on page 1 of the specification are continuation-in-part                           
              applications.  In making this determination, the examiner should pay careful attention to the                
              inventorship of each application.  Katz, Chang, and Nacht are listed as the coinventors of                   
              parent Application 07/803,234.  That application is stated to be a continuation-in-part of                   
              Application 07/644,869, now U.S. Patent No. 5,145,675 to Won alone.  One of the                              
              requirements of 35 U.S.C.  120 which must be met before claims in an application are                        
              entitled to the benefit of the filing date of an earlier filed application is that the application           
              under review must be “filed by an inventor or inventors named in the previously filed                        
              application.”  Thus, it does not appear on this record that the claims on appeal are entitled                
              under 35 U.S.C.  120 to the benefit of the earlier filing date of Won.  If the present claims               
              are not entitled to the benefit of the earlier filing date of Won, that patent is available as               
              prior art under 35 U.S.C.  102(e).  Since Won describes the topical composition of                          

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