Appeal 2007-0417
Application 10/796,814
devoid of any merit. As explained by our reviewing court in Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991):
The CCPA also recognized a subtle distinction between a
written description adequate to support a claim under § 112 and
a written description sufficient to anticipate its subject matter
under § 102(b). The difference between “claim-supporting
disclosures” and “claim-anticipating disclosures” was
dispositive in In re Lukach, 442 F.2d 967, 169 USPQ 793
(CCPA 1971), where the court held that a U.S. “grandparent”
application did not sufficiently describe the later-claimed
invention, but that the appellant’s intervening British
application, a counterpart to the U.S. application, anticipated
the claimed subject matter. As the court pointed out, “the
description of a single embodiment of broadly claimed subject
matter constitutes a description of the invention for anticipation
purposes…, whereas the same information in a specification
might not alone be enough to provide a description of that
invention for purposes of adequate disclosures…. ”
Consistent with the holding of Lukach, our reviewing court in In re Chu,
66 F.3d 292, 297, 36 USPQ2d 1089, 1093 (Fed. Cir. 1995) held that an
applicant’s parent application was available as prior art against the claims of
its child application.
The Appellants contend that “the selective application by the
Examiner of ‘inherent disclosure’ to find anticipation yet deny priority has
no basis in patent law” (Br. 5). This contention, however, is incorrect in the
context of the present circumstance. As indicated supra, the Appellants
have not demonstrated that “there has been [a] ‘continuing disclosure [of the
claimed subject matter] through the chain of applications, without hiatus’” as
required by Lemelson, supra and “a specific reference” to all the
applications in the chain, including Pitts, in the present application as
required by Sticker Indus. Supply Corp. v. Blaw-Knox Co., supra.
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