Appeal No. 2005-1431
Application 09/442,070
Final Rule, 69 Fed. Reg. 56,482 (Sept. 21, 2004), reprinted in 1278 Off. Gaz. Pat. & Trademark
Office 67 (Oct. 12, 2004). Section 1.57(b) reads:
§ 1.57 Incorporation by reference
. . . .
(b) Except as provided in paragraph (a) of this section, an
incorporation by reference must be set forth in the specification and
must:
(1) Express a clear intent to incorporate by reference by using the
root words "incorporat(e)" and "reference'' (e.g., "incorporate by
reference''); and
2) Clearly identify the referenced patent, application, or
publication.
Not only does Section 1.57(b) fail to additionally require identification of the particular part or
parts of the referenced document which are being incorporated by reference, the commentary to
the final rulemaking notice explains that such identification is permissive:
The Office recommends that particular attention be directed to specific portions of
referenced documents where the subject matter incorporated may be found if
large amounts of material are incorporated.
69 Fed. Reg. at 56,501, 1287 Off. Gaz. Pat. & Trademark Office at 82 (emphasis added). In light
of this commentary, appellants appear to be correct to conclude that the MPEP § 608.01(p)
language "[p]articular attention should be directed to specific portions of the referenced
document where the subject matter being incorporated may be found" is permissive rather than
mandatory.
The question remains, however, whether this permissive approach is consistent with the
requirements of the statutes, see Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10,
33 USPQ2d 1823, 1828 n.10 (Fed. Cir. 1995) ("While the MPEP does not have the force of law,
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