Appeal No. 2005-1431
Application 09/442,070
Bailey application was incorporated by reference into a Hostettler application relied on by the
examiner as anticipatory prior art.33 The incorporating language at issue read as follows:
The above-described siloxane-oxyalkylene block copolymers can be
prepared in accordance with the procedures described and claimed in the
copending application of D. L. Bailey and F. M. O'Conner, Serial No. 417,935,
filed December 14, 1953.
455 F.2d at 603, 170 USPQ at 217. Based on the manner in which Hostettler described the
invention, the court held that a person skilled in the art would have understood the phrase "[t]he
above-described siloxane-oxyalkylene block copolymers" to be referring to material in Bailey
which does not include Example I(a). Id.
Nor is any specific guidance on the question before us provided by Hawkins, In re Voss,
557 F.2d 812, 816-17, 194 USPQ 267, 269-70 (CCPA 1977), or In re Hughes, 550 F.2d 1273,
193 USPQ 141 (CCPA 1977), all decided after Saunders.34
at 674, 177 USPQ at 146 ("To be sure, the statement that an application is a continuation-in-part,
or a continuation, or a division, or in part a continuation of another application is in a broad
sense a 'reference' to the earlier application, but a mere reference to another application, or
patent, or publication is not an incorporation of anything therein into the application containing
such reference for the purposes of the disclosure required by 35 U.S.C. 112.").
33 The court phrased the issue this way: "The section 102 rejection in this case can be
sustained only on the theory that Hostettler expressly incorporates a particular part of Bailey by
reference." 444 F.2d at 602, 170 USPQ at 216. This is apparently the basis for Advanced
Display's characterization of Saunders as "reasoning that a rejection for anticipation is
appropriate only if one reference 'expressly incorporates a particular part' of another reference."
212 F.3d at 1282, 54 USPQ2d at 1680.
34 Hawkins involved the following incorporation by reference language: "These novel
compounds may for example be used in the production of valuable monomers for example by the
processes described in copending British applications 36107/66, 42756/66, 46971/66, 49699/66,
(Continued on next page.)
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