Appeal No. 2005-1264 Page 5
Application No. 09/682,594
or “a second connecting member moveably affixed to the second guide rail and
hingedly connected to the collapsible storage surface” as recited in claim 35 (emphasis
ours). We also fail to find descriptive support in the appellants’ original disclosure for “a
side element defining a recess for receiving a bungee cord” as recited in claim
37 (emphasis ours) or a “collapsible rail hingedly affixed to the hinge bar” as recited in
claim 38 (emphasis ours).
We note, at the outset, that any reliance by the appellants or declarant Le
Nguyen on the provisional application from which the present application claims priority
is misplaced, as the disclosure of the provisional application is not expressly
incorporated by reference into the present application. 37 CFR § 1.57(a) provides that,
under certain conditions, a claim for the benefit of a prior-filed provisional application is
considered an incorporation by reference of the prior-filed provisional application for
certain purposes. See Changes To Support Implementation of The United States
Patent and Trademark Office 21st Century Strategic Plan, 69 Fed. Reg. 56481, 56539
(Sept. 21, 2004) (final rule). 37 CFR § 1.57(a) became effective on September 21,
2004 and applies only to applications filed on or after September 21, 2004. Id. at
56482, 56500. The instant application was filed on September 25, 2001, before the
effective date of 37 CFR § 1.57(a), and thus may not rely on the incorporation by
reference provision of 37 CFR § 1.57(a). Rather, the instant application is subject to the
rule of decision that the mere reference to another application is not an incorporation by
reference of such application. Cf. In re Lund, 376 F.2d 982, 989, 153 USPQ 625, 631-
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