Appeal No. 2005-1431
Application 09/442,070
of the application disclosures. See Advanced Display, 212 F.3d at 1283, 54 USPQ2d at 1680
("[I]f incorporation by reference comes into play in an anticipation determination, the court's role
is to determine what material in addition to the host document constitutes the single reference.
The factfinder's role, in turn, is to determine whether that single reference describes the claimed
invention.").
For the foregoing reasons, we will apply the law on incorporation by reference as stated
in Advanced Display and repeated in Cook Biotech.
Appellants' argument that MPEP § 2163.07(b)35 "expressly authorizes the incorporation
by reference of an entire document," Brief at 20, is unconvincing because an incorporation by
reference must satisfy the specificity requirement of Advanced Display. Nor does appellants'
35 The version of this provision that was in effect when the brief was filed read:
2163.07(b) Incorporation by Reference
Instead of repeating some information contained in another document, an
application may attempt to incorporate the content of another document or part
thereof by reference to the document in the text of the specification. The
information incorporated is as much a part of the application as filed as if the text
was repeated in the application, and should be treated as part of the text of the
application as filed. Replacing the identified material incorporated by reference
with the actual text is not new matter. See MPEP § 608.01(p) for Office policy
regarding incorporation by reference.
MPEP 2163.07 (8th ed., rev. 1, Feb. 2003) (emphasis added). In the current version, the
last sentence has been amended to read:
See >37 CFR 1.57 and< MPEP § 608.01(p) for Office policy regarding
incorporation by reference. See MPEP § 2181 for the impact of incorporation by
reference on the determination of whether applicant has complied with the
requirements of 35 U.S.C. 112, second paragraph when 35 U.S.C. 112, sixth
paragraph is invoked.
MPEP § 2163.07(b) (8th ed., rev. 4, Oct. 2005) (emphasis added).
35
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