Appeal No. 2005-1431
Application 09/442,070
Thus, no CCPA or Court of Claims decision of which we are aware provides clear
support for either Advanced Display or Ultradent. However, Advanced Display's requirement
that "[t]o 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," 212 F.3d at 1282, 54 USPQ2d at 1679 (citation omitted),
comports with General Electric's holding 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," 407 F.2d at 1262, 159 USPQ at 338 (emphasis added), which holding
was based on the court's consideration of the requirements of 35 U.S.C. § 112, including the
written description requirement. Id. at 1261, 159 USPQ at 337. Although not stated in General
Electric, it is evident that the absence of a specific identification of the material of the source
document that is being incorporated by reference and an explanation of what it is being relied on
to show will make it difficult for examiners, the public, and the courts to determine which
material the inventor considered to be part of his or her invention when the application was filed.
50324/66, 10070/67, and 10071/67." 486 F.2d at 571, 179 USPQ at 159. Voss concerned the
language "[r]eference is made to United States Patent No. 2,920,971, granted to S.D. Stookey,
for a general discussion of glass-ceramic materials and their production." 557 F.2d at 815,
194 USPQ at 269. Hughes involved the language "reference is made to application Ser. No.
131,108 for complete descriptions of methods of preparing aqueous polymeric dispersions
applicable in the hereinafter described invention." 550 F.2d at 1275, 193 USPQ at 143
(emphasis omitted).
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