Interference No. 103,605
in “an application” or in “a subsequent regularly filed
application”, in order to be accorded the benefit of the filing
date of that earlier application. In other words, there is no
basis whatsoever in the statute for combining the disclosures of
separate priority documents when determining whether any of those
documents provide a sufficient description of an invention to
satisfy the first paragraph requirements of 35 U.S.C. § 112.
Even if we were to view all of the foregoing factors in a
light most favorable to Yamada12, we agree with Aggarwal that
none of Yamada’s Japanese priority applications, taken singly or
in combination, provide sufficient disclosure of the subject
matter defined in part(b) of Yamada claim 1 to satisfy the
description requirement of 35 U.S.C. § 112, first paragraph.
While we are in substantial agreement with Aggarwal’s
position, as reflected in Aggarwal’s brief (AB 32-60) and reply
brief (ARB 16-32), we view the following factors as being
determinative.
First of all, it is significant that both Vehar and
12 In other words, in reaching our conclusions we accept,
arguendo, Yamada’s narrow interpretation of the scope of part (b)
of Yamada claim 1, and that the disclosures in J1-J3 can be
viewed in combination, while also giving due weight to the
testimony of both Dr. Matsushima and Dr. Vehar as expert
witnesses.
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