SHIOKAWA et al. V. MAIENFISCH et al. - Page 20




                      B.     Shiokawa Corrected Preliminary Motion 1 for Priority Benefit                                     

                      Shiokawa moves for priority benefit of the filing dates of its earlier JP and U.S. patent               

              applications.  (Shiokawa Corrected Preliminary Motion 1, Paper No. 74, p. 1).  Specifically,                    

              Shiokawa seeks benefit for the purposes of priority of the following applications:                              

                      (1)    Japanese patent application JP 1-54943, filed March 09,1989.                                     
                      (2)    U.S. Application Ser. No. 07/487,004, filed March 01, 1990.                                      
                      (3)    U.S. Application Ser. No. 07/658,933, filed February 21, 1991.                                   
                      (4)    U.S. Application Ser. No. 07/870,178, filed April 16, 1992.                                      

              (Paper No. 74, p. 1).  The ‘146 patent is said to be a divisional of the 07/870,178 application which is        

              said to be a continuation of the 07/658,933 application which itself is said to be a continuation of the        

              07/487,004 application.  (Paper No. 74, ¶1, 2, 3).  The 07/487,004 application and its children are             

              said to claim benefit under 35 U.S.C. §119 of the filing date of the JP 1-54943 application.  (Paper            

              No. 74, ¶6).  The disclosures of Shiokawa ‘146, its three U.S. parent applications and its JP priority          

              application are essentially identical.  (Paper No. 74, ¶7, Maienfisch Opposition 1, Paper No. 83, p. 2).        



                             1.      Case Law Analysis for According Priority Benefit                                         

                      For Shiokawa to have benefit of the earlier filing dates, Shiokawa must demonstrate that its            

              earlier applications constituted a constructive reduction to practice of the subject matter of the count.       

              Credle v. Bond, 25 F.3d 1566, 1570, 30 USPQ 1911, 1914 (Fed. Cir. 1994).  For an earlier-filed                  

              application to serve as constructive reduction to practice, “the applicant must describe the subject            

              matter of the count in terms that establish that he was in possession of the later-claimed invention,           

              including all of the elements and limitations presented in the count, at                                        


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