2133.01 Rejections of Continuation-In-Part (CIP) Applications [R-10.2019]
[Editor Note: This MPEP section is not applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152 et seq. for a detailed discussion of AIA 35 U.S.C. 102(a) and (b).]
The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. See MPEP § 2139.01 for guidance in determining the effective filing date of a claimed invention under pre-AIA 35 U.S.C. 102.
When applicant files a continuation-in-part application, none of whose claims are supported by the parent application under pre-AIA 35 U.S.C. 112, first paragraph, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b). Paperless Accounting v. Bay Area Rapid Transit System, 804 F.2d 659, 665, 231 USPQ 649, 653 (Fed. Cir. 1986).
Any claim that only contains subject matter that is fully supported in compliance with the statutory requirements of pre-AIA 35 U.S.C. 112, first paragraph, by the parent application of a CIP will have the effective filing date of the parent application. On the other hand, any claim that contains a limitation that is only supported as required by pre-AIA 35 U.S.C. 112, first paragraph, by the disclosure of the CIP application will have the effective filing date of the CIP application. See, e.g., Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 104 USPQ2d 1641 (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art against the claims in CIPs that did not find support in the parent application); Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674 (Fed. Cir. 1997)("To qualify for an earlier filing date, section 120 requires, inter alia, that the earlier-filed U.S. patent application contain a disclosure which complies with 35 U.S.C. § 112, p 1 (1994) for each claim in the newly filed application. Thus, this benefit only applies to claims that recite subject matter adequately described in an earlier application, and does not extend to claims with subject matter outside the description in the earlier application.").