Appeal 2007-3294
Application 10/354,220
(Provisional Application), filed November 30, 1999, with each of these
Applications incorporating by reference “the text of the cited Ahluwalia
reference” (Reply Br. 4, citing Provisional Application 60/168,057, 3:9-10,
and U.S. Patent 6,586,353, col. 2, ll. 57-59; see also Br. 9 n.1). Appellant
contends the parent and Provisional Applications properly incorporate
“essential material” from the Ahluwalia reference pursuant to 37 C.F.R.
§ 1.57(c), and that if the Ahluwalia reference does anticipate claims 2
through 11, the reference “would necessarily provide adequate support and
enablement for claims 2-11” under § 112, first paragraph, entitling the
claims to the benefit of the parent and provisional Applications, and thus,
avoiding the ground of rejection under § 102(b) (Reply Br. 4-5).
The Examiner did not respond to the issues raised by Appellant with
respect to the new ground, stating only “[t]he reply brief filed January 22,
2007, has been noted” in the Office Action mailed May 16, 2007. See
37 C.F.R. § 41.43(a)(1) (2006).
The issues raised by Appellant’s contention involve whether the
incorporation-by-reference of the Ahluwalia reference in the parent
Application and the Provisional Application is sufficient to provide
“essential material” satisfying the requirements of § 112, first paragraph,
with respect to the invention encompassed by claims 2 through 11,
establishing that Appellant is entitled to the benefit of the dates of these
Applications under § 120 with respect thereto, and thus removing the ground
of rejection of the claims under § 102(b) over the reference. See
37 C.F.R. § 1.57(c) (2006); MPEP §§ 608.01(p), I. Incorporation by
Reference, and 2163.07(b) (8th ed., Rev. 5, August 2006). The Examiner
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