Appeal No. 2005-1431
Application 09/442,070
anticipation determination-by citing such material in a manner that makes clear
that the material is effectively part of the host document as if it were explicitly
contained therein. See General Elec. Co. v. Brenner, 407 F.2d 1258, 1261-62,
159 USPQ 335, 337 (D.C. Cir.1968); In re Lund, 54 C.C.P.A. 1361, 376 F.2d
982, 989, 153 USPQ 625, 631 (CCPA 1967). To incorporate material by
reference, the host document must identify with detailed particularity what
specific material it incorporates and clearly indicate where that material is found
in the various documents. See In re [de] Seversky, 474 F.2d 671, 674, 177 USPQ
144, 146 (CCPA 1973) (providing that incorporation by reference requires a
statement "clearly identifying the subject matter which is incorporated and where
it is to be found"); In re Saunders, 58 C.C.P.A. 1316, 444 F.2d 599, 602-03,
170 USPQ 213, 216-17 (CCPA 1971) (reasoning that a rejection for anticipation
is appropriate only if one reference "expressly incorporates a particular part" of
another reference); National Latex Prods. Co. v. Sun Rubber Co., 274 F.2d 224,
230, 123 USPQ 279, 283 (6th Cir. 1959) (requiring a specific reference to
material in an earlier application in order have that material considered part of a
later application); cf. Lund, 376 F.2d at 989, 153 USPQ at 631 (holding that a one
sentence reference to an abandoned application is not sufficient to incorporate
material from the abandoned application into a new application).
212 F.3d at 1282, 54 USPQ2d at 1679 (emphasis added). Significantly, the court additionally
held that the magistrate's referral of the incorporation by reference question to the jury
constituted prejudicial error:
In the present case, determining what material was incorporated by reference into
the Haas patent was a critical question of law for the magistrate judge to resolve
before submitting the factual issue of anticipation to the jury. Indeed, during trial,
ADS never contended that the material explicitly set forth in the Haas patent
alone would anticipate the West patent. Rather, ADS's anticipation argument
hinged on the combination of the Haas patent and the material potentially
incorporated therein. The magistrate judge, however, failed to address the legal
question; instead, he left that determination for the jury. This misallocation of
responsibility goes to the core of an anticipation determination when, if
incorporation by reference is at issue, the court must determine what material
constitutes the single, prior art document. Consequently, because the instruction
vitiated Kent's right to have a pivotal legal question resolved by the court, we
hold that the legal error was prejudicial.
Id. at 1283-84, 54 USPQ2d at 1680-81 (emphasis added).
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