Appeal No. 1996-0111
Application 08/041,428
It is the examiner's position that the terminology and concept encompassed by the
claim limitation of "homeostasis" was not disclosed in the parent application and that
therefore claims 25-26 are not entitled to the benefit of the filing date of the parent
applications under the provisions of 35 U.S.C. § 120. (Answer, page 11).
Citing the Declaration of Dr. Brown as supporting evidence, appellant argues that
"the term 'optimum health', found by the Examiner to be supported by the original parent
case . . . encompasses 'homeostasis' as that term is commonly used and understood in
the art" and further that "the term 'homeostasis', which was used in combination with
'optimum health' for emphasis rather than to designate a new and different concept, might
be fairly deduced from the original disclosure by one skilled in the animal management
art.” (Principal Brief, page 17-18)
However, as our appellate court stated in Lockwood v. American Airlines Inc., 107
F.3d 1565, 1571, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997):
It is the disclosures of the applications that count. Entitlement to a filing date
does not extend to subject matter which is not disclosed, but would be
obvious over what is expressly disclosed. It extends only to that which is
disclosed. While the meaning of terms, phrases, or diagrams in a disclosure
is to be explained or interpreted from the vantage point of one skilled in the
art, all the limitations must appear in the specification. The question is not
whether a claimed invention is an obvious variant of that which is disclosed
in the specification. Rather, a prior application itself must describe an
invention, and do so in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented the claimed invention as of the filing date
sought. (Citation omitted).
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