Appeal 2007-2127
Reexamination Control No. 90/006,621
amendment. The statement that the '604 patent is a continuation of the 1990
application does not incorporate-by-reference any subject matter from the
1990 application into the '604 patent, nor does 35 U.S.C. § 120 operate to
carry forward the disclosure of the 1990 filing application. See de Seversky,
474 F.2d at 674, 177 USPQ at 146-47.
Patent Owner could have amended the 1994 application while it was
pending to incorporate subject matter from the 1990 application. However,
by allowing the 1994 application to issue as the '604 patent without the
natural language subject matter, Patent Owner created a break in the chain of
disclosures, which cannot be cured by amendment.
Patent Owner argues that "[t]he Federal Circuit has ruled in Litton
Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438, 221 USPQ 97, 106 (Fed.
Cir. 1984), that matter in a parent application is not impermissible new
matter when added to a continuation application by amendment, and is
entitled to the filing date of the parent" (Br. 80). In particular, Patent Owner
refers to the following statement in Litton:
If new matter added through amendment to a C-I-P application is
deemed inherent in whatever the original patent application discloses,
however, that matter is also entitled to the filing date of the original,
parent application. [Emphasis added by Patent Owner.]
Litton v. Whirlpool, 728 F.2d at 1438, 221 USPQ at 106. It is argued that
the amendment to the specification has literal, not just inherent, support in
the 1990 application that led to the '603 patent and that pursuant to
35 U.S.C. § 120, Patent Owner is entitled to amend his specification to
include language from a parent application.
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