Relevant Prosecution Histories
The 143 Application
F 4. Leung’s involved Application 09/128,143 is the fourth in a chain of applications.1
F 5. The three earlier applications (referred to collectively as “the parent applications”) are
08/969,377 (the parent application); 08/498,990 (the grandparent application) and
08/339,521 (the great-grandparent application).
F 6. The text of the original 143 Specification, as filed, is admitted, in a transmittal letter
submitted with the filing of the 143 Application, to be identical to the text of the great-
grandparent application, as filed:
The specification of this continuation application is identical to (i.e., a true
copy of) the 08/339,521 [(great-grandparent)] application.
Application 09/128,143, transmittal letter filed 3 August 1998, bracketing added.
F 7. A comparison of the text of the 143 Specification, as filed, appears to be identical to the text
of the great-grandparent specification, as filed.
F 8. Both the transmittal letter and a preliminary amendment filed concurrently with the 143
Application attempt to incorporate the disclosures of the parent applications. Application
09/128,143, transmittal letter filed 3 August 1998; Application 09/128,143, Paper 4.
F 9. However, Leung, in a paper filed during this interference, has specifically disclaimed reliance
upon any additional subject matter present in the parent and grandparent applications to
support the involved claims:
[T]he “new matter” contained in the [parent and grandparent] applications that
makes the [143] application a C-I-P with respect to the [great-grandparent]
application is not used in anyway to support the claims of the [143]
application.
1 The 143 Application was itself refiled as a “continued prosecution application” or CPA. Except for
entitling an applicant to a new set of Office actions, the CPA application is treated for all purposes as if it were the
“parent” application. The CPA maintains the same serial number as the parent application. CPA papers are placed in
the parent file wrapper and the papers are numbered beginning with the next number after the last paper number in the
parent. Amendments entered in the parent application remain entered in the CPA. No new matter may be entered into
the CPA. Subject matter that would be new matter in the parent will also be new matter in the CPA. And subject matter
added to the parent that is new matter is new matter in the CPA. 37 CFR § 1.53(d) and MPEP § 201.06(d). For the
purpose of this decision, we have treated the CPA and its “parent” as a single application and refer to them collectively
as the 143 Application and the specification as the 143 Specification.
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Last modified: November 3, 2007