Appeal No. 1998-2587
Application No. 08/451,993
enable them. The examiner therefore argues that both Terasawa EP and Mitsui
are available as prior art.
We agree with the examiner that a claim must be enabled by a priority
document in order to gain the benefit of an earlier effective filing date under 35
U.S.C. § 120. See In re Hogan, 559 F.2d 595, 604, 194 USPQ 527, 536 (CCPA
1977) (“[S]ymmetry in the law, and evenness of its application, require that § 120
be held applicable to all bases for rejection, that its words ‘same effect’ be given
their full meaning and intent.”) Accord, Transco Prods. Inc. v. Performance
Contracting Inc., 38 F.3d 551, 557, 32 USPQ2d 1077, 1082 (Fed. Cir. 1994)
(§ 120 requires compliance with all the requirements of the first paragraph of
§ 112). Therefore, we reject Appellants’ argument that they “are entitled to the
filing date of January 14, 1992 pursuant to 35 U.S.C. § 120, regardless of the
sufficiency of disclosure.” Appeal Brief, page 5 (emphasis in original).
However, we have already concluded that the instant claims are enabled
by the instant specification. See pages 3 to 6, supra. The examiner has not
suggested that the degree of enablement provided by the parent applications
differs from that of the instant application; the disclosures are apparently
identical. Therefore, the claims were apparently enabled by the parent
specifications and are therefore entitled to the benefit of priority under § 120.
The effective filing date of the instant claims is January 14, 1992. Neither
Terasawa EP nor Mitsui are prior art, so neither can form the basis of a rejection
under 35 U.S.C. § 102.
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