Appeal No. 2002-0741
Application No. 08/935,348
sufficient that claims 13-19 be accorded the filing date of the
‘858 application in order to disqualify Zacharias PCT ‘238 as
prior art under 35 U.S.C. § 102(b).3 Thus, the dispositive issue
with respect to this rejection is whether claims 13-19 should be
accorded the filing date of continuation-in-part application
08/659,858 filed by appellants on June 7, 1996.
When a continuation-in-part application contains claims that
are not supported by the parent application, the effective filing
date of the claims in the child continuation-in-part application
is the filing date of the child application. Any prior art
disclosing the invention having a critical reference date more
than one year prior to the filing date of the child will bar the
issuance of a patent under 35 U.S.C. § 102(b). Paperless
Accounting, Inc. v. Bay Area Rapid Transit Sys., 804 F.2d 659,
665, 231 USPQ 649, 652-53 (Fed. Cir. 1986), cert. denied, 480
3It is necessary that claims 13-19 be accorded the filing
date of the ‘858 application because earlier application
08/331,072 and the present application were never copending.
Thus, if claims 13-19 cannot be accorded the filing date of the
‘858 application, the chain of copendency is broken and claims
13-19 cannot be accorded the filing date of the earlier ‘072
application. It is sufficient that claims 13-19 be accorded the
filing date of June 7, 1996 of the ‘858 application because if
they are accorded this date, the critical reference date of
Zacharias PCT ‘238 would not be more than one year prior to the
effective date of the subject matter of claims 13-19, as required
by 35 U.S.C. § 102(b).
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