[Patentpractice] [Designs] Continuation Broadening Reissue confirmation of my understanding

[Timothy Snowden]

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).

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.

Thank you again to all - especially David, Rick, Scott, and George!

On 9/25/2025 11:35 AM, David Boundy wrote:

>     Also, if the 'original patent' didn't /expressly /incorporate all
>     parents by reference, then Lockwood v American Airlines 1997
>     (requiring 'continuity of disclosure') could prohibit reaching back?
>
>
> 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 
> "/expressly/" -- that suggests you might be hosed, 37 CFR § 1.57(b) 
> clearly won't work -- "inadvertent."  A priority claim is /*not*/ an 
> incorporation by reference.)
> *
> *
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20250925/d4b154e3/attachment.html>