Appeal No. 2004-0358 Page 8
Application No. 08/997,748
applicants misapprehend what constitutes a “moot” question and use that term
incorrectly in their Appeal Brief.
Even assuming arguendo that amended claims 94 through 96 and 100 through
118 enjoy written descriptive support in the instant specification, nevertheless, it would
not follow that “they are entitled to priority of at least 1985.” As stated in In re van
Langenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972),
To be entitled to the filing date of a previously filed application, appellant's
application on appeal would have to satisfy the requirements of 35 U.S.C.
§ 120, among which is the requirement that the subject matter now
claimed be disclosed in the manner prescribed by the first paragraph of
section 112 in the prior application. Since, to conform to section 112,
claimed subject matter must be described in the specification relied upon,
subject matter which is first disclosed in a continuation-in-part application
is not entitled to the filing date of the parent application. [citations omitted]
Further, “[a]s to given claimed subject matter, only one effective date is applicable” (Id.).
On this record, applicants have not engaged in a claim-by-claim analysis and have not
established that any appealed claim is entitled to the benefit of a previously filed
application under 35 U.S.C. § 120. In fact, applicants do not mention 35 U.S.C. § 120
in their Appeal Brief. We here note the continuation information provided in Paper No.
15, received February 11, 2000, listing a series of continuation applications and stating,
inter alia, that Application No. 07/404,543, filed September 8, 1989, (now abandoned) is
a continuation-in-part of Application No. 07/363,303, filed June 7, 1989, which is a
continuation-in-part of Application No. 07/102,754, filed September 24, 1987 (now
abandoned), which is a continuation-in-part of Application 06/800,840, filed
November 22, 1987, (now abandoned). It is not apparent, and applicants have not
established, that any appealed claim is entitled to the benefit of a previously filed
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