holding that, “where a patent purports on its face to be a 'continuation-in-part' of a prior application, the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat another’s right to a patent”
How later courts described this case
- holding that, “where a patent purports on its face to be a 'continuation-in-part' of a prior application, the continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat another’s right to a patent”
- stating that a “continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat another’s right to a patent”
- holding a lone sentence similar to that used by Mr. Judin inadequate to bring forward a specific part of the earlier patent’s disclosure
- “continuation-in-part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application, whether for purposes of obtaining a patent or subsequently utilizing the patent disclosure as evidence to defeat another’s right to a patent”
Written by the judges who cited it.
The opinion
SMITH, Judge
(concurring).
I agree with the reasoning and conclusion of the majority. Because of the importance of the issue presented by the Patent Office’s use of the Margerison patent in the present circumstances, I should like to cite the following material as of interest and relevancy to that issue, in addition to the cases and materials appearing in the majority opinion.
I. Monroe Auto Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 416 (6th Cir., 1964);
Monarch Marking System Co. v. Dennison Mfg. Co., 92 F.2d 90, 92-93 (6th Cir., 1937);
Interurban Ry. & Terminal Co. v. Westinghouse Electric & Mfg. Co., 186 F. 166, 168 (6th Cir., 1911);
United States Blind Stitch Mach. Corp. v. Reliable Mach. Works, Inc., 67 F.2d 327 (2nd Cir., 1933);
Overman Cushion Tire Co. v. Goodyear Tire & Rubber Co., 40 F.2d 460 (2nd Cir., 1930);
Fessenden v. Wilson, 48 F.2d 422 , 18 CCPA 1171;
In re Tenney, 254 F.2d 619 , 45 CCPA 894.
II. Decisions of the Board of Appeals Ex Parte Burgess, 152 USPQ 711 , 712
Ex Parte Thelin, 152 USPQ 624
Ex Parte Shacter, 139 USPQ 380
Ex Parte Tummers, 137 USPQ 444
Ex Parte Lipkin, 129 USPQ 427
Ex Parte MacDonald, 113 USPQ 262
Ex Parte Gresham, 90 USPQ 350
Ex Parte Jordan, 90 USPQ 41
Ex Parte Peterson, 63 USPQ 99
Ex Parte Clifford, 49 USPQ 152
Ex Parte Caldwell, 32 USPQ 129
III. Literature
Orenbuch, “Abandoned Applications as Prior Art,” 45 J.P.O.S. 613 (August 1963)
Randle, “Patent Invalidity: Prior Knowledge as Evidenced by an Unpublished Written Description,” 45 J.P.O.S. 97 (Feb. 1963) Jacobs, “Abandoned Applications as References,” 44 J.P.O.S. 184 (March 1962)
Orenbuch, “The Doctrine of Incorporation by Reference in the Law of Patents,” 43 J.P.O.S. 467 (July 1961)
Levy, “Offensive Defensive Patent Applications,” 39 J.P.O.S. 159 (March 1957)
Jones, “Ex Parte Heritage (vs. Finck)”, 33 J.P.O.S. 729 (Oct. 1951)
Federico, “The Use of Abandoned Applications as References,” 28 J.P.O.S. 160 (March 1946)
Osheroff, “The Use of Abandoned Applications Referred to in a Patent as a Reference,” 19 Geo. Wash.Law Review 73 (Oct. 1950)
Manual of Patent Examining Procedure, §§ 901.02, 901.01