Appeal 2007-1335
Application 10/449,558
claimed in the ‘246 Application. However, it was not. This appeal turns on
the question of whether a constructive reduction to practice by the same
inventors of the same invention in an unrelated application can be relied
upon to antedate a reference applied under 35 U.S.C. § 102(e)? We are
compelled to conclude that it does not for two related reasons:
First, as explained previously, construction reduction to practice is a
legal fiction that is the outcome of an inventor’s act of filing an application
in compliance with 35 U.S.C. § 112. See Euth, 70 F.2d at 114, 21 USPQ at
234. Consistent with 37 C.F.R. § 41.201, it requires continuity between the
act and the application, confining the doctrine to the specific application
filed by the inventors at issue in the proceeding, or descendents of the
application which meet the requirements of 35 U.S.C. § 120. The ‘558
Application at issue in this appeal is not the outcome of the inventors’ act in
filing the ‘246 Application; it is an unrelated application. Therefore, it
cannot serve as a construction reduction to practice in the ‘558 Application.
Secondly, 35 U.S.C. § 120 states that to be entitled to the “benefit” of
the “filing date” of an earlier filed application, the later filed application
must “contain a specific reference to the earlier filed application.” Here,
Appellants are for practical purposes asking for the benefit of the earlier
filing date of the ‘246 Application as a constructive reduction to practice.
To be entitled to it, 35 U.S.C. § 120 requires a specific reference to in their
Specification.3 Since such reference is missing from the ‘558 Application,
the statute prohibits it from obtaining benefit of the earlier filed application.
3 If the ‘558 Application were entitled to the filing date of the ‘246
Application as a constructive reduction to practice, it would circumvent the
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