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<p>As an update to everyone on the 'practical' side, I talked to a
very friendly and knowledgeable agent at OPLA, who indicated that
they suspected the USPTO would take the position that the
continuation broadening reissue application would be an improper
'conversion' from design to utility because the 'invention' of the
'original patent' was a design.</p>
<p>Not saying I agree, but it's helpful to confirm what you'd likely
be facing.</p>
<div class="moz-cite-prefix">On 9/25/2025 1:03 PM, Timothy Snowden
via Designs wrote:<br>
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<p>Yes, and when I wrote that email I was momentarily thinking
about 37 CFR 1.57c (which I know better, but I was focusing on
the design-v-utility question and had a brain freeze). Let's
assume for now (since it's a question that I know what the
answer is based on what the facts turn out to be) that each
patent includes an express incorporation by reference, since
that's my normal practice (not my patent chain though so I have
to double check that).</p>
<p>Summarizing my thoughts right now (assuming we have express
inc. by ref.): the argument is not out of the question but the
(assuming express) incorporation by reference aspect is likely
an unsettled question. Based on George's comments (and my gut
feel), the PTO is probably going to reject it, so one who
followed this approach would likely have to plan to take it to
the CAFC.</p>
<p>Thank you again to all - especially David, Rick, Scott, and
George!</p>
<p>On 9/25/2025 11:35 AM, David Boundy wrote:</p>
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<p>Also, if the 'original patent' didn't <i>expressly </i>incorporate
all parents by reference, then Lockwood v American
Airlines 1997 (requiring 'continuity of disclosure')
could prohibit reaching back?</p>
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<div> When I first read your post, that was my first
question. If each application in the chain uses the words
"incorporate by reference," 37 CFR § 1.57(c), then I
think you've got a plausible argument, even if the
incorporation crosses between utility and design. If any
one link in the chain is broken, you don't. (You
emphasize the word "<i>expressly</i>" -- that suggests you
might be hosed, 37 CFR § 1.57(b) clearly won't work --
"inadvertent." A priority claim is <i><b>not</b></i> an
incorporation by reference.)
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