Appeal 2007-2074
Application 10/658,863
any of 10/016,436, 09/249,118, 09/170,092, 08/889,919, and 08/504,023 fail to
contain a disclosure which complies with 35 U.S.C. § 112, first paragraph, for each
claim on appeal.
Section 120 . . . concerns only an applicant’s effective filing date . . . and it
expressly requires an earlier application to disclose the claimed subject
matter in compliance with 35 U.S.C. § 112, first paragraph.
In re Scheiber, 587 F.2d 59, 62, 199 USPQ 782, 784 (CCPA 1978).
It is elementary patent law that a patent application is entitled to the benefit
of the filing date of an earlier filed application only if the disclosure of the
earlier application provides support for the claims of the later application, as
required by 35 U.S.C. § 112. 35 U.S.C. § 120. Mendenhall v. Cedarapids
Inc., 5 F.3d 1557, 1566, 28 USPQ2d 1081, 1088-89 (Fed. Cir. 1993) (“A
patentee cannot obtain the benefit of the filing date of an earlier application
where the claims in issue could not have been made in the earlier
application.”), cert. denied, 511 U.S. 1031, 114 S.Ct. 1540, 128 L.Ed.2d 192
(1994); see also Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438,
221 USPQ 97, 106 (Fed. Cir. 1984) (discussing filing dates of CIP
applications).
In re Chu, 66 F.3d 292, 297, 36 USPQ2d 1089, 1093 (Fed. Cir. 1995). See also
Studiengesellschaft Kohle M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564-65, 42
USPQ2d 1674, 1677-78 (Fed. Cir. 1997).
We observe that the Examiner found that the 08/504,023 application does
not provide written descriptive support in accordance with the first paragraph of 35
U.S.C. § 112 for the subject matter on appeal (Answer 9). However, even if the
Examiner is correct that the 08/504,023 application does not contain a disclosure
which complies with 35 U.S.C. § 112, first paragraph, for each claim on appeal
and, as a result, the present application is not entitled under 35 U.S.C. § 120 to the
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