Appeal No. 2005-1431
Application 09/442,070
In In re Hawkins, 486 F.2d 569, 179 USPQ 157 (CCPA 1973), the CCPA discussed the
General Electric decision as follows:
[T]he [General Electric] court considered the difficulties presented
when applicants incorporate by reference information contained in other
sources, such as patents, publications, etc. After reviewing the cases on
the subject and the practicalities of the situation, the court concluded that
the practice did indeed have longstanding basis in the law, and that
necessarily the Commissioner of Patents is vested with wide discretion to
formulate rules and guidelines governing its use, thereby to prevent its
abuse.
486 F.2d at 573, 179 USPQ at 161 (emphasis added.) Hawkins neither discusses nor adopts
General Electric's "incorporates, by reference, (and relies thereon) certain portions of a
disclosure" standard.
During oral argument in the instant appeal, counsel was invited to file a paper addressing
Advanced Display. Appellants timely filed such a paper, entitled "Supplement to Appellants'
Reply to Examiner's Answer" (hereinafter "Supplemental Reply"), which addresses not only
Advanced Display but also Ultradent Products, Inc. v. Life-Like Cosmetics, Inc., 127 F.3d 1065,
44 USPQ2d 1336 (Fed. Cir. 1997), which appellants characterize as more pertinent to the issue.27
Every patent shall contain a short title of the invention and a grant
to the patentee, his heirs or assigns, for the term of seventeen years, of the
right to exclude others from making, using, or selling the invention
throughout the United States, referring to the specifications for the
particulars thereof. A copy of the specification and drawings shall be
annexed to the patent and be a part thereof.
Id. at 1263, 159 USPQ at 338 (emphasis by the court.)
27 Counsel was not invited to, and did not, address Atmel Corp. v. Information Storage
Devices, Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999), wherein the court held that "the
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