Appeal 2007-2074
Application 10/658,863
of any benefit under this section. The Director may establish
procedures, including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment under this section.
35 U.S.C. § 120 (1999).
One way to show an application is not entitled to the benefit claimed under
35 U.S.C. § 120 of the filing date of an earlier application is to show that the
earlier-filed application was not “filed by an inventor or inventors named in the
previously filed application” (35 U.S.C. § 120).
In that regard, USPTO’s records indicate that the inventors of the present
application are Mark L. Yoseloff and Roger M. Snow. This differs from the
inventors named on any of the earlier-filed applications. According to USPTO’s
records, which the Examiner should verify, the named inventors for each of the
earlier-filed applications are:
10/016,436: Derek J. Webb and Roger M. Snow
09/249,118: Derek J. Webb
09/170,092: Derek J. Webb
08/889,919: Derek J. Webb
08/504,023: Derek J. Webb.
Complete identity of named inventors for each application in the chain is not
required but there must be at least some overlap.
The 1984 amendment to § 120 plainly allows continuation, divisional, and
continuation-in-part applications to be filed and afforded the filing date of
the parent application even though there is not complete identity of
inventorship between the parent and subsequent applications. D. Chisum,
Patents Section 13.07 (1995). Thus, the Board erred in requiring complete
identity of inventorship between the Doyle patent and the Chu application in
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Last modified: September 9, 2013