Appeal 2007-0417
Application 10/796,814
The dispositive question is, therefore, whether Pitts is available as
“prior art” within the meaning of 35 U.S.C. 102(b). On this record, we
answer this question in the affirmative.
35 U.S.C. § 120 (Nov. 29, 1999) states in relevant part:
An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
title in an application previously filed in the United States, or as
provided by section 363 of this title, which is filed by an
inventor or inventors named in the previously filed application
shall have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the first
application or on an application similarly entitled to the benefit
of the filing date of the first application and if it contains or is
amended to contain a specific reference to the earlier filed
application.
To obtain the benefit of the filing date of an earlier application, this
statue requires that, inter alia, the subject matter claimed in the present
application must be supported by the written description provided in the
earlier application within the meaning of 35 U.S.C. § 112, first paragraph.
In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1994),
cert. denied, 469 U.S. 1209 (1985). The subject matter claimed in the
present application can find written descriptive support either explicitly or
inherently in the earlier application. Kennecott Corp. v. Kyocera Int’l Inc.,
835 F.2d1419, 1421-23, 5 USPQ2d 1194, 1196-98 (Fed. Cir. 1987).
However, in order for the present application to be entitled under 35 U.S.C.
§ 120 to the filing date of Pitts in the chain of applications of which it is a
part, “it must be shown that as to the inventions claimed there has been [a]
‘continuing disclosure through the chain of applications, without hiatus.’”
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