Appeal No. 2005-1431
Application 09/442,070
27 F.3d at 1069, 44 USPQ2d at 1339-40 (emphasis added). Appellants therefore appear to be
correct to characterize Ultradent as holding that "an incorporation by reference statement
substantially like Appellants' is effective to incorporate the entire document referenced by the
statement." Supplemental Reply at 5.
We are unable to reconcile this Ultradent holding with Advanced Display, which cites
Ultradent only for the proposition that "[m]aterial not explicitly contained in the single, prior art
document may still be considered for purposes of anticipation if that material is incorporated by
reference into the document." Advanced Display, 212 F.3d at 1282, 54 USPQ2d at 1679. Where
two Federal Circuit decisions, neither en banc, are in conflict, it is necessary to determine which,
if either, of the decisions is consistent with CCPA precedent. See South Corp. v. United States,
690 F.2d 1368, 1369, 215 USPQ 657, 657 (Fed. Cir. 1982) (CCPA and Court of Claims
decisions are binding precedent in Federal Circuit until overruled en banc). Unfortunately, the
CCPA decisions cited in Advanced Display do not assist in resolving this question one way or
the other, as none involve language which purports to incorporate an entire document by
reference while discussing only a portion thereof. Instead, in de Seversky and Lund the
question was whether an incorporation by reference of material from an earlier application had
occurred.32 In Saunders, the question was whether a "particular part," namely, Example I(a), of a
32 See Lund, 376 F.2d at 988, 153 USPQ at 631 ("[W]e do not think that the single
sentence by which Margerison refers to his earlier application -- ‘The present application is a
continuation-in-part application of our application Serial No. 763,806, filed September 29, 1958
(now abandoned)’-- is sufficient in and of itself to render Example 2 of the abandoned
application part of the patent disclosure as if fully set out therein."); de Seversky, 474 F.2d
(Continued on next page.)
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