Appeal 2006-2017
Application 09/784,284
1 statutory bar and cannot be antedated through an affidavit filed under 37
2 C.F.R. § 1.131. See 37 C.F.R. § 1.131(a)(2) (2004).
3 Appellants have made a claim of priority under 35 U.S.C. § 120 (see
4 the Oath filed February 16, 2001). However, the requirements of 35 U.S.C.
5 § 120 must be met before claims in an application are entitled to the benefit
6 of the filing date of any earlier-filed application to which Appellants have
7 made a claim of priority under 35 U.S.C. § 120. In the case before us, in
8 order for the claims on appeal to be entitled to the benefit of the filing dates
9 of the ‘038 and ‘244 applications under 35 U.S.C. §120, the record must
10 show that the ‘038 and ‘244 applications contain a disclosure which
11 complies with 35 U.S.C. § 112, first paragraph, for each claim in the
12 subsequently filed ‘284 application. Studiengesellschaft Kohle m.b.H. v.
13 Shell Oil Co., 112 F.3d 1561, 1564-65, 42 USPQ2d 1674, 1677-78 (Fed. Cir.
14 1997).
15 To settle any question that Naiman is a statutory bar to the patenting
16 of the claims on appeal, Appellants must analyze each application in the
17 train of earlier-filed applications to see if they contain a disclosure which
18 complies with 35 U.S.C. § 112, first paragraph, for each claim in the
19 subsequently filed ‘284 application and make the necessary findings
20 showing that the claims on appeal are entitled to the benefit under 35 U.S.C.
21 § 120 of the filing dates of at least the ‘038 and ‘244 applications.
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Last modified: September 9, 2013