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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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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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