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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