Appeal No. 2003-2079
Application No. 09/207,972
rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner states that
whether the parent patent to Kizilyalli1 supports the limitations
of Kizilyalli ‘238 is “irrelevant” to the present claims (Answer,
page 5). As correctly stated by appellants (Brief, page 4), this
is clear error since, to be entitled to the filing date of the
Kizilyalli ‘435 application, the claims of Kizilyalli ‘238 must be
disclosed pursuant to 35 U.S.C. §§ 120/112 in this parent
application. See In re Wertheim, 646 F.2d 527, 538-39, 209 USPQ
554, 565-66 (CCPA 1981)(Patent Office that wishes to utilize
against applicant part of patent disclosure found in application
filed earlier than date of application that became patent must
demonstrate that earlier-filed application contains Sections
120/112 support for invention claimed in reference patent). See
also MPEP, §2136.03, IV, 8th ed., Rev. 1, Feb. 2003; cf., Ex parte
Ebata, 19 USPQ2d 1952, 1954 (Bd. Pat. App. & Int. 1991).
As also correctly stated by appellants, there are two
limitations in the claims of Kizilyalli ‘238 that are not supported
1The Kizilyalli ‘435 application has now issued as U.S.
Patent No. 6,548,854 B1 (the ‘854 patent). See the Answer, page
5, and the Reply Brief, page 3.
4
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