Appeal No. 1997-2528
Application No. 07/810,908
1972). See also, Studiengesellschaft Kohl mbH v. Shell Oil Co., 112 F.2d 1561, 1563,
42 USPQ2d 1674, 1677 (Fed. Cir. 1997) ; In re Chu, 66 F.3d 292, 297,
36 USPQ2d 1089, 1093 (Fed. Cir. 1995); and In re Gosteli, 872 F.2d 1008, 1011,
10 USPQ2d 1614 (Fed. Cir. 1989).
If the effective filing date for subject matter claimed in a U.S. Application is in
issue, the foreign application relied upon for priority under Section 119 must be
examined to determine whether it supports, within meaning of 35 U.S.C. § 112, first
paragraph, what is claimed in U.S. Application, and thus, claims in issue are entitled to
benefit of foreign priority date only if foreign application properly supports such claims
as required by § 112.
Where an applicants claim, as here, a class of compositions, he must describe
that class in order to meet the description requirement of the statute. See In re
Ahlbrecht, 435 F.2d 908, 912, 168 USPQ 293, 296 (CCPA 1971); In re DiLeone and
Lucas, 436 F.2d 1404, 1405, 168 USPQ 592, 594 (CCPA 1971); In re DiLeone, 436
F.2d 1033, 1034, 168 USPQ 598, 598 (CCPA 1971). In addition, Lockwood v.
American Airlines Inc., 107 F.3d 1565, 1571-1572, 41 USPQ2d 1961, 1966 (Fed. Cir.
1997) held:
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
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