Appeal 2007-2074
Application 10/658,863
order for Chu to have the benefit of the Doyle patent's filing date. There is
overlap in the inventive entities of the Doyle patent and the Chu application,
which, after the 1984 amendment, is all that is required in terms of
inventorship or “inventive entity” to have the benefit of an earlier filing date.
But this does not determine whether Chu is entitled to the Doyle date.
In re Chu, 66 F.3d 292, 297, USPQ2d 1089, 1093 (Fed. Cir. 1995). Here, Roger
M. Snow is listed as an inventor on the present application and on the 10/016,436
parent application. Accordingly, there is an overlap in named inventors for the
present application and 10/016,436. But there is no overlap in named inventors for
the present application and any of 09/249,118, 09/170,092, 08/889,919, and
08/504,023. If USPTO’s records are accurate, the present application would not be
entitled to the benefit of the filing dates of 09/249,118, 09/170,092, 08/889,919,
and 08/504,023 because they were not “filed by an inventor or inventors named in
the previously filed application” (35 U.S.C. § 120), leaving the filing date of
10/016,436, i.e., April 29, 2002, as the only possible earlier filing date to which the
present application may be entitled. In that circumstance, de Keller would be
legally available as prior art under 35 U.S.C. § 102(b).
Another way to show the present 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 claimed subject matter was not “disclosed in the manner provided by the
first paragraph of section 112 of this title in [the] application previously filed in the
United States” (35 U.S.C. § 120). If USPTO’s records on inventorship are
inaccurate (in which case they should be updated), the present application would
nevertheless still not be entitled to the benefit under 35 U.S.C. § 120 filing dates of
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