Appeal No. 2007-0111
Reexamination 90/006,297
1 Vandenberg Is Available as Prior Art Against the Appealed Claims
2 As discussed above, in order for a claim to be entitled to the benefit of the
3 filing date of a previously filed application under 35 U.S.C. § 120, the previously
4 filed application must comply with the written description requirement of 35
5 U.S.C. § 112, ¶1.7 In re Curtis, 354 F.3d at 1351-52, 69 USPQ2d at 1278. “This
6 requires the disclosure in the earlier application to reasonably convey to one of
7 ordinary skill in the art that the inventors possessed the later-claimed subject
8 matter when they filed the earlier application.” In re Curtis, 354 F.3d at 1351, 69
9 USPQ2d at 1278. In assessing the sufficiency of the claim for an earlier filing
10 date, a “description which renders obvious the invention for which an earlier filing
11 date is sought is not sufficient.” Lockwood v. American Airlines, Inc., 107 F.3d
12 1565, 1572, 41 USPQ2d 1961, 1965-66 (Fed. Cir. 1997). Nor is conclusive
13 evidence of a claim’s enablement necessarily conclusive of a claim’s compliance
14 with the written description requirement. In re Curtis, 354 F.3d at 1357, 69
7 Under 35 U.S.C. § 119(a), a United States application must be filed within
twelve months from the filing date of the foreign application. Thus, to obtain
benefit of priority under 35 U.S.C. § 119(a) to Italian applications 24227 and
25109 filed on June 8, 1954 and July 27, 1954, respectively, the 07/883,912
application (now Unites States Patent 6,365,687 B1 issued on April 2, 2002) must
be entitled to the benefit of an earlier filing date under 35 U.S.C. § 120 from the
03/514,097 application filed on June 8, 1955, the first-filed Unites States
application in the ancestor chain. Because Vandenberg issued on October 16, 1962
from an application filed on April 7, 1955, benefit of priority under 35 U.S.C. §
119(a) to either of the Italian applications is crucial to antedating Vandenberg.
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