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   Re: CIP applications
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Anon
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Re: CIP applications
« Reply #5 on: Jul 11th, 2006, 10:26am »
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on Jul 11th, 2006, 6:26am, Bill Richards wrote:
What's the result if a portion of the CIP claim is supported?  For example, parent supports and claims A+B.  CIP supports C and claims A+B+C?

 
I'm not sure whether I understand your question either....
 
But like I said,  priority is determined on a claim-by-claim basis.   That is, a particular claim either gets priority or it doesn't.
 
on Jul 11th, 2006, 5:38am, Isaac wrote:

 
I believe that if the parent has been published for 1 year before the CIP is filed, for claims not eligible for the priority of the parent, the published parent application is available under 102(b) and under 103(a).

 
I'll just add that, if the inventorship of the parent differs in any way from that of the CIP (which is often the case), then the published parent could potentially serve as 102(a) as well.
 
I think the real question is why, post-GATT, anyone files CIPs anymore.   Any thoughts?
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tigerpat
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Re: CIP applications
« Reply #6 on: Jul 11th, 2006, 11:06am »
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How about this situation then?
 
Applicant files a claim to a broad genus.  The Examiner 112's the claim as lacking enablement and failing to satisfy the written description.  Applicant settles for particular species claims.  
 
Before the parent (above) issues, Applicant files a CIP adding subject matter to hopefully support the broad genus claim and again claims the broad genus.
 
First, since the Examiner 112's the broad genus claim to begin with, I don't see how he could give the broad genus claim the benefit of the parent application (even though the parent does disclose a number of species of the genus).
 
Second, since the parent does disclose numerous species of the genus claimed in the CIP, could the parent be used as prior art v. the CIP to anticipate the claimed genus?
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JimIvey
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Re: CIP applications
« Reply #7 on: Jul 11th, 2006, 3:05pm »
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I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.
 
As I understand the hypothetical, it's not possible.  If the genus is insufficiently supported, the species is similarly insufficiently supported.
 
Regards.
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James D. Ivey
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Anon
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Re: CIP applications
« Reply #8 on: Jul 11th, 2006, 3:48pm »
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on Jul 11th, 2006, 3:05pm, JimIvey wrote:
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.
 
As I understand the hypothetical, it's not possible.  If the genus is insufficiently supported, the species is similarly insufficiently supported.

 
Tigerpat's post is a bit confusing, but I think this is what was meant:  
 
1) The parent supports the species but does NOT support the genus; and
2) the CIP supports the genus.
 
In such a case, and depending on dates and so forth, the species disclosed in the parent could possibly serve as prior art against the genus claims of CIP.  And in fact, this is a very common scenario.
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Isaac
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Re: CIP applications
« Reply #9 on: Jul 11th, 2006, 4:08pm »
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on Jul 11th, 2006, 3:05pm, JimIvey wrote:
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.

 
I think the hypothetical is certainly possible.   There is a whole line of CAFC cases including the recent Lizardtech v. Earth Resources Mapping which we've discussed here before that suggest that a disclosure can fail to support a broad claim by describing only a single embodiment or describing a single way of implementing a given feature.
 
The question is whether an application that fails to support a broad claim in such a way could serve as prior art against a CIP that added additional describtion to overcome the 112 rejection but did not recite that additional description in the claims.   In theory, every feature of the new claim would be found in the parent application.
 
I don't know the answer.   I think it ought to be possible to overcome at least a 102 rejection by arguing the original description was not enabling.
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Isaac
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