Appeal No. 1996-3708
Application 07/474,742
introducing new matter. From this argument the Examiner
concludes that Appellants' application is not entitled to the
prior filing date.
In view of our finding that Engels fails to teach or
suggest Appellants' claimed invention, we do not need to reach
this issue and find the issue moot . 3
In view of the forgoing we will not sustain the rejection
of claims 1 through 13, 15 through 34 and 36 through 38 under
3 However, even if we were to reach this issue we would
not have been able to make the determination. The Examiner
has not provided the necessary findings to establish that the
application is not entitled to the parent application’s filing
date. Our reviewing court set forth the proper legal analysis
to determine whether a later filed CIP is entitled to the
benefit of the parent application’s filing date. In Paperless
Accounting Inc. v. Bay Area Rapid Transit System, 804 F.2d
659, 663-64, 231 USPQ 649, 652 (Fed. Cir. 1986) “[T]he mere
filing of a continuation-in-part with additional matter or
revised claims is not itself an admission that the matter is
‘new’ or that the original application was legally
insufficient to support the claims” (citing State Industries,
Inc. v. A.O. Smith Corp.,751 F.2d 1226, 1233, 224 USPQ 418,
422 (Fed Cir. 1985). The proper legal analysis requires the
determination of whether the added matter was known and
available to the public at the time of filing of the parent
application. Id. at 664, 231 USPQ at 653. This is a
determination that the Examiner must make before we can
provide a ruling. In addition, matters are further
complicated by the Examiner’s rejection of the claims under
obviousness type double patenting.
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