Interference No. 103,203
pCIS.TF, in an appropriate depository, in their involved ‘989 Application and benefit
applications, and (iii) in their benefit applications, Lawn et al. instruct one skilled in the art
to make a human placental cDNA library starting from human adipose RNA. Paper No.
167, pp. 4-7. Edgington et al. urge that due to these shortcomings, it would require undue
experimentation for one skilled in the art to make and use the claimed invention. Id., pp.
14-16.
We find these arguments unpersuasive.
First, we find that Edgington et al. have confused the requirement that benefit
applications in the context of 35 U.S.C. § 120, must satisfy the requirements of 35
U.S.C. § 112, first paragraph, in order for a later-filed application to receive the benefit of
the earlier filing date, and the requirement that a specification must satisfy the enablement
(and best mode) requirements of 35 U.S.C. § 112, first paragraph, in order for the claims
to be patentable. As recently set forth by our appellate reviewing court in Reiffin v.
Microsoft Corp., 214 F.3d 1342, 1346, 54 USPQ2d 1915, 1918 (Fed. Cir. 2000):
Analysis of the disclosure in ancestor applications is appropriate when
benefit of an earlier filing is sought under 35 U.S.C. §120:
35 U.S.C. §120. An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 of this title in an
application previously filed in the United States ... shall have the same effect,
as to such invention, as though filed on the date of the prior application....
Although §120 incorporates the requirements of §112 ¶1, these requirements and
the statutory mechanism allowing the benefit of an earlier filing date are separate
provisions with distinct consequences. In accordance with §120, claims to subject
matter in a later filed application not supported by an ancestor application in terms
of §112 ¶1 are not invalidated; they simply do not receive the benefit of the earlier
applications filing date [emphasis added].
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