Appeal 2007-2074
Application 10/658,863
under 35 U.S.C. § 102(b). Note that in either case, it would not be necessary to
further show that the present application is not entitled to the benefit under 35
U.S.C. § 120 of the filing dates of the other earlier-filed applications in the chain.
This is so because a determination that an application is not entitled to the benefit
under 35 U.S.C. § 120 of the filing date of an application breaks the chain of
priority, preventing the application from securing the benefit of the filing date of
any earlier application.
[T]here has to be a continuous chain of copending applications each of
which satisfies the requirements of § 112 with respect to the subject matter
presently claimed . . . . There must be continuing disclosure through the
chain of applications, without hiatus, to ultimately secure the benefit of the
earliest filing date.
In re Hogan, 559 F.2d 595, 609, 194 USPQ 527, 540 (CCPA 1977).
The application is remanded to the Examiner to reconsider the rejections in
light of the comments in this decision. If the Examiner decides to continue to
apply de Keller as prior art against the claims, the Examiner should clarify under
which paragraph of 35 U.S.C. § 102 de Keller is legally available as prior art (i.e.,
§102(b) or (e)). In so doing, the Examiner will have to establish the effective filing
date of the present application. That will entail determining that the subject matter
of the appealed claims is not entitled to benefit under 35 U.S.C. § 120 of the filing
dates of 10/016,436, 09/249,118, 09/170,092, 08/889,919, or 08/504,023. This
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