Appeal No. 2005-1431
Application 09/442,070
In addition to other requirements for an application, the referencing application
*>must< include an identification of the referenced patent, application, or
publication. >See 37 CFR 1.57(b)(2)[.]< Particular attention should be directed
to specific portions of the referenced document where the subject matter being
incorporated may be.
MPEP § 608.01(p) (8th ed., rev. 4, Oct. 2005) (emphasis added).25 The basis for the change, i.e.,
37 CFR § 1.57(b)(2), became effective on October 21, 2004. Changes to Support
Implementation of the United States Patent and Trademark Office 21st Century Strategic Plan --
25 The paragraph which includes the language quoted above reads in pertinent part as
follows:
Mere reference to another application, patent, or publication is not an
incorporation of anything therein into the application containing such reference
for the purpose of the disclosure required by 35 U.S.C. 112, first paragraph. In re
de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). >37 CFR 1.57(b)(1)
limits a proper incorporation by reference (except as provided in 37 CFR 1.57(a))
to instances only where the perfecting words "incorporated by reference" or the
root of the words "incorporate" (e.g., incorporating, incorporated) and "reference"
(e.g., referencing) appear. The requirement for specific root words will bring
greater clarity to the record and provide a bright line test as to where something is
being referred to is an incorporation by reference. The Office intends to treat
references to documents that do not meet this "bright line" test as noncompliant
incorporations by reference and may require correction pursuant to 37 CFR
1.57(g). If a reference to a document does not clearly indicate an intended
incorporation by reference, examination will proceed as if no incorporation by
reference statement has been made and the Office will not expend resources
trying to determine if an incorporation by reference was intended. < In addition
to other requirements for an application, the referencing application *>must<
include an identification of the referenced patent, application, or publication.
>See 37 CFR 1.57(b)(2)[.]< 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) (8th ed., rev. 4, Oct. 2005).
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