Appeal No. 96-3189
Application 08/396,079
would render the resulting patent invalid [answer, pages 14
and 15].
We believe that the instant case turns on the objective
actions of Appellants during the history of prosecution of the
patent application. We have closely studied the fact
situations in Hull and Moore, and compared them with the fact
situation in the present case. In Hull, there were six
continuation-in-part applications, each succeeding application
was filed with claims corresponding, either exactly or
substantially, to each of the claims which had previously been
allowed in each of the preceding applications as well as with
claims drawn to features which were disclosed in that
application for the first time, Hull, 191 USPQ at 158.
In Moore, Moore had waited for many years, from around
1942, the actual reduction to practice, to 1955, before
filing his initial patent application, but once the
application was filed, there was a continuous series of
rejections and amendments during the prosecution. In fact, it
was not until four continuation-in-part applications later
that Moore overcame all the rejections, and received an
indication that his application contained allowable claims.
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