¶ 2.10 Disclosure of Prior-Filed Application Does Not Provide Support for Claimed Subject Matter
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. [1], fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for one or more claims of this application. [2]
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. This form paragraph may be used when there is lack of support or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed application under 35 U.S.C. 120, 121, or 365 (c) or under 35 U.S.C. 119 (e). The prior-filed application can be a provisional application or a nonprovisional application.
3. In bracket 1, insert the application number of the prior-filed application.
4. In bracket 2, provide an explanation of lack of support or enablement. If only some of the claims are not entitled to the benefit of the filing date of the prior application, the examiner should include a list those claims after the explanation (e.g., "Accordingly, claims 1-10 are not entitled to the benefit of the prior application.").