Appeal No. 2004-2239
Application No. 09/975,417
effect, as to such invention, as though filed on the
date of the prior application, if filed before the
patenting or abandonment of or termination of
proceedings on the first application or on an
application similarly entitled to the benefit of the
filing date of the first application and if it
contains or is amended to contain a specific reference
to the earlier filed application. No application
shall be entitled to the benefit of an earlier filed
application under this section unless an amendment
containing the specific reference to the earlier filed
application is submitted at such time during the
pendency of the application as required by the
Director. The Director may consider the failure to
submit such an amendment within that time period as a
waiver of any benefit under this section. The
Director may establish procedures, including the
payment of a surcharge, to accept an unintentionally
delayed submission of an amendment under this section.
For a claim in a later filed application to be entitled to
the benefit of an earlier filing date of a previously filed
application under 35 U.S.C. § 120, the previously filed
application must comply with the written description requirement
of 35 U.S.C. § 112, ¶1. In re Curtis, 354 F.3d 1347, 1351-52,
69 USPQ2d 1274, 1278 (Fed. Cir. 2004); In re Huston, 308 F.3d
1267, 1276, 64 USPQ2d 1801, 1806-07 (Fed. Cir. 2002); Lockwood
v. American Airlines, Inc., 107 F.3d 1565, 1571, 41 USPQ2d 1961,
1965-66 (Fed. Cir. 1997). “This requires the disclosure in the
earlier application to reasonably convey to one of ordinary
skill in the art that the inventors possessed the later-claimed
subject matter when they filed the earlier application.” In re
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