Appeal 2007-2127
Reexamination Control No. 90/006,621
Principles of law
"In order to gain the benefit of the filing date of an earlier application
under 35 U.S.C. § 120, each application in the chain leading back to the
earlier application must comply with the written description requirement."
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572,
41 USPQ2d 1961, 1968 (Fed. Cir. 1997) (citing In re Hogan, 559 F.2d 595,
609, 194 USPQ 527, 540 (CCPA 1977); In re Schneider, 481 F.2d 1350,
1356, 179 USPQ 46, 50 (CCPA 1973) ("[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." (citation omitted)).
That is, there may be break in disclosure of continuing applications.
"[T]he statement that an application is a continuation-in-part, or a
continuation, or a division . . . is not an incorporation of anything therein
into the application containing such reference for the purposes of the
disclosure required by 35 U.S.C. 112. Likewise it does not serve to bring a
disclosure within the requirements of 35 U.S.C. 120 so as to give a later
application the benefit of the filing date of an earlier application. The later
application must itself contain the necessary disclosure." In re de Seversky,
474 F.2d 671, 674, 177 USPQ 144, 146-47 (CCPA 1973). Section 120 does
not operate to carry forward subject matter from an earlier application. Cf.
Dart Industries, Inc. v. Banner, 636 F.2d 684, 688, 207 USPQ 273, 276
(D.C. Cir. 1980) (new matter in reissue):
Section 120 merely provides a mechanism whereby an application
becomes entitled to benefit of the filing date of an earlier application
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