Appeal No. 2001-1651 Page 14
Application No. 09/238,972
Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438, 221 USPQ 97,
106 (Fed. Cir. 1984) (discussing filing dates of CIP applications).
Thus, Chu is entitled to the benefit of the Doyle patent filing date
only if the Doyle patent discloses the subject matter now claimed
by Chu. This, however, is admitted by Chu not to be the case. In
fact, Chu states that “the invention as now claimed[ ] was not
described in the [Doyle] patent.” … Accordingly, Chu cannot
obtain the benefit of the Doyle patent filing date for these claims
and the Doyle patent was properly relied on as prior art.
Accordingly, in order for the instant application to be entitled under 35 U.S.C.
§ 120 to the filing date of an earlier application in the chain of applications it is
part of, it must be shown that as to the inventions claimed there has been
“continuing disclosure through the chain of applications, without hiatus.” In re
Schneider, 481 F.2d 1350, 1356, 179 USPQ 46, 50 (CCPA 1973). Accord In re
Hogan, 559 F.2d 595, 609, 194 USPQ 527, 540 (CCPA 1977); In re Goodman,
476 F.2d 1365, 1368, 177 USPQ 574, 576 (CCPA 1973). Appellant admits on
this record that the ‘123 patent “does not discuss antisense oligonucleotides
directed against CAT2 mRNA….” Brief, page 10. Accordingly, there was no
continuing disclosure through the chain of applications.
Appellant also argues (id.), “[g]iven the disclosure of the sequence [in the
‘123 patent], the design and selection of an antisense oligonucleotide against
CAT2 mRNA was completely within range of one with ordinary skill in the art.”
However, as our appellate reviewing court held in Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997):
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 which is disclosed in the specification. Rather, a prior
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