Appeal No. 2005-1431
Application 09/442,070
it is entitled to judicial notice as an official interpretation of statutes or regulations as long as it is
not in conflict therewith.") (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1439,
221 USPQ 97, 107 (Fed. Cir. 1984)), and more particularly with the requirements of 35 U.S.C.
§ 112, first paragraph,. We begin by noting that in General Electric, the D.C. Circuit addressed
the question of
[w]hether the Commissioner of Patents has the authority, under the
applicable statutes and regulations, to issue a patent upon an application
which incorporates, by reference, in its disclosure, substantial portions of
a disclosure of an existing patent? If he does have such power, to what
extent may "incorporation by reference" be permitted?
407 F.2d at 1261, 159 USPQ at 337. The court held:
The duty to superintend the issuance of patents resides in the
Commissioner by statute. In exercising those duties the Commissioner is
given wide discretion based upon his experience and expertise and the
courts should not disturb his rulings unless a clear abuse of that discretion
is manifest. However, the question before this Court arises not out of an
abuse of discretion but upon the limits of discretion. In that regard, we
hold that the Commissioner has the authority to issue a patent upon an
application wherein the disclosure incorporates, by reference, (and relies
thereon) certain portions of a disclosure of an existing patent provided that
this information relied upon is available to the public.
Id. at 1262, 159 USPQ at 338 (footnote omitted; emphasis added). The court did not elaborate
on its language "incorporates, by reference (and relies thereon) certain portions of a
disclosure."26
26 The court further held that an incorporation by reference which satisfies the
requirements of 35 U.S.C. § 112 will necessarily satisfy the requirements of 35 U.S.C. § 154,
which read:
35 U.S.C. § 154 (1964). Contents and term of patent.
(Continued on next page.)
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