【美專】CIP的子案與母案之間

美專120的部分內容：
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.
因此規定了只有在by an inventor or inventors named in the previously filed application 的情況下才可以 entitled to the benefit of the filing date of the first application。

介紹一個判例“In Re Chu”：申請人母案申請發明 A ，隨後再申請 CIP 子案對發明 A 加入新的限制條件，並且還改變了inventive entities。

先看看Board的分析：
Analysis of the Board of Patent Appeals and Interferences
It reasoned that “because the Doyle patent and the Chu application have different, albeit overlapping, inventive entities,” the Doyle patent was necessarily the work of another as defined in the United States Patent Code,2 and therefore available as a prior art reference against the Chu application.
事實上Board的分析其實是依據判例法對美專102條“by another”的解譯，只要有一人不相同就算是不同的inventive entities。因此子案就不能夠 entitled to the benefit of the filing date of the first application。

CAFC的分析
Analysis of the Court of Appeals for the Federal Circuit
Congress’ s substitution of the phrase “by the same inventor” in 35 U.S.C. s.120 with the phrase “which is filed by an inventor or inventors named in the previously filed application” in the Patent Law Amendments Act of 1984. Judge Rich stated that with this change in statutory language, Congress intended to allow continuation, divisional, and continuation-in-part5 applications to be filed and afforded the filing date of the parent application even absent complete identity of inventorship between the parent and subsequent applications.
Thus Judge Rich reversed the Board’s conclusion that the Chu application—which incorporated one, but not all, of the inventors of the Doyle patent—was prevented from claiming priority under section 120 of the United States Patent Code.

Section 120, in conjunction with section 112 of the Patent Code, requires that in order for the subsequently-filed application to take advantage of its parent application’s earlier filing date, the parent application must disclose the subject matter claimed in the subsequent application.

Accordingly, Judge Rich found that Chu’s independent claim 1, the subject matter of the patent application at issue, was not supported by the Doyle patent’s disclosure. Therefore, Judge Rich denied Chu the benefit of its parent application’s earlier filing date.

後來CAFC對by an inventor or inventors named in the previously filed application的解譯是只要有一人相同即可，所以子案可以 entitled to the benefit of the filing date of the first application。但是還有個條件，就是只有母案有支持的部分才能夠 entitled to the benefit of the filing date of the first application。 最後由於子案新的claim沒有得到母案的支持，母案就變成子案的 prior art。

Specifically, in order for a subsequently-filed patent application to claim the filing date of its parent application, two requirements must be met. First, the inventive entity in the subsequent application must overlap at least in part with the inventive entity disclosed in the parent application. Second, the earlier-filed application must disclose the subject matter claimed in the subsequently-filed application.


自己的想法：
若 母案包含 a+b ；而子案包含 a+b+c 。我們可以爭論說因為子案的 a+b 可以 entitled to the benefit of the filing date of the first application，所以 a+b 不能拿來駁 a+b+c 嗎？當然不行因為發明是一個整體。不過這就奇怪了，那申請 CIP 做什麼？不就是為了享受母案 a+b 的日期，然後再加上 c ，來更完整的保護自己的發明嗎？目前還在想這個問題。

==========================================
另外還想到了 Terminal Disclaimer感覺好像滿像的，為什麼obviousness-type double patenting可以用Terminal Disclaimer克服而這就不行，哪裡出來問題？我想不出來，若各位前輩您知道答案，望請不吝指教（ides13@gmail.com）。

關於此問題，應該是在於兩發明間會不會被認為是屬於“相同的發明”。“ a+b+c”、“a+b”不會被認為是屬於相同的發明。那什麼又是屬於相同的發明？