Appeal No. 2005-1431
Application 09/442,070
The version of MPEP § 608.01(p) that was in effect on the September 4, 1996, filing date
of the application that matured into the '701 patent read in pertinent part as follows:
In addition to other requirements for an application, the referencing application
should include an identification of the referenced patent, application, or
publication. Particular attention should be directed to specific portions of the
referenced document where the subject matter being incorporated may be found.
MPEP § 608.01(p) at 600-62 to 600-64 (6th ed., rev. 2, July 1996) (emphasis added; copy
enclosed). Appellants argue that the examiner erred by treating the sentence underlined above as
mandatory rather than permissive, citing as support In re Goodwin, 43 USPQ2d 1856, 1858
(Comm'r Pats. & Trademarks 1997) (unpublished); In re Lund, 376 F.2d 982, 989, 153 USPQ
625, 631 (CCPA 1967); General Electric Co. v. Brenner, 407 F.2d 1258, 159 USPQ 335 (D.C.
Cir. 1968); MPEP § 2163.07; and the following PTO notices: (a) Guidelines for Incorporation by
Reference in Patent Applications, 34 Fed. Reg. 883 (Jan. 18, 1969), reprinted in 859 Off. Gaz.
Pat. Office 346 (Feb. 11, 1969) (Attachment D to brief); and (b) Response to Comment 34,
Changes to Patent Practice and Procedure – Final Rule, 62 Fed. Reg. 53,132, 53,145-46 (Oct. 10,
1997), reprinted in 1203 Off. Gaz. Pat. & Trademark Office 63, 75 (Oct. 21, 1997) (Attachment
E to brief ) ("1997 Final Rule Notice"). Brief at 20-24. However, it is evident from events
which have occurred subsequent to the filing of appellants' brief that the Director of the PTO
gives the above-underlined language in MPEP § 608.01(p) a permissive interpretation. In the
current version of that provision, the term "should" in the first sentence quoted above has been
changed to "must" while the term "should" in the second sentence has remained unchanged:
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