Appeal No. 1998-0318 Page 5
Application No. 08/539,466
absolutely no mention of these features in the specification as originally filed, or in the
original claims or the claims substituted therefor by the preliminary amendment. Nor, in our
view, is there any portion of the specification which would have conveyed to one skilled in
this art that the above-quoted features were considered by the appellants to be part of their
invention. Rather, after the first office action, this material was copied from Keiter, one of
seven patents listed on page 1 of the originally filed specification under the heading of
“CROSS REFERENCE TO RELATED APPLICATIONS.” It is noteworthy that the copying
was not even from the one patent of the seven (Hulette et al U.S. Patent No. 5,236,666)
which was discussed in the appellants’ specification. We emphasize again that there is
not even a mention in the originally filed specification of an automated system in which
contact of the probe with the surface of the sample activates a liquid level sensor that
sends a control signal to a controller, much less that this is considered to be part of the
appellants’ invention, or that the system disclosed by Keiter is preferred. From our
perspective, the examiner therefore is correct in finding that the specification fails to
establish that the appellants had possession of the invention as now claimed at the time
the application was filed. To conclude otherwise would be to open the door to an applicant
to incorporate thousands of patents into a specification by reference with an eye toward
later searching through them for features that could be added to the claims of the
application to cause them to patentably define over the applied prior art. Permitting this
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