Appeal No. 1999-1400
Application No. 08/849,211
and (2) "the weight percent of the residual alcohol and
phosphoric acid are individually each less than 6%."
The applicable law is stated in In re Wertheim, 646 F.2d
527, 537, 209 USPQ 554, 564 (CCPA 1981):
Thus, in a situation such as this, only an
application disclosing the patentable
invention before the addition of new matter,
which disclosure is carried over in to the
patent, can be relied upon to give a
reference disclosure the benefit of its
filing date for the purpose of supporting a
§§ 102(e)/103 rejection.
Hence, if the claim limitations in the Reierson patent
regarding "exclusively reacting" and the amount of residual
alcohol and phosphoric acid are new matter in the Reierson
application, the filing date of the parent application cannot
serve as the effective filing date of the Reierson patent as a
reference.
In the present case, we concur with appellants that the
examiner has not established, in the first instance, that the
parent application described, within the meaning of 35 U.S.C.
§ 112, first paragraph, the claimed invention in the Reierson
patent with respect to "exclusively reacting" and "the weight
percent of the residual alcohol and phosphoric acid are
individually each less than 6%." While the examiner states
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