## Facts

- Applicants sought claims to a “Drying Method,” a process for freeze-drying coffee extract by concentrating extract, charging it with gas to form foam, regulating pressure (at least atmospheric), then freezing and freeze-drying while maintaining conditions to avoid flavor loss.
- The examiner finally rejected claims 37, 38, and 44 as obvious under 35 U.S.C. § 103 over a Pfluger patent combined with other references (including Flosdorf and Sivetz).
- The Board affirmed, treating the Pfluger patent as prior art under 35 U.S.C. § 102(e) with an effective date reaching back to the 1961 filing of Pfluger’s first application based on a continuation/continuation-in-part chain.
- The process limitation in Pfluger that was central to the PTO’s obviousness theory first appeared in a later continuation-in-part filing (Pfluger III, filed in 1966), not in the 1961 application.
- Applicants appealed, arguing the PTO could not accord the Pfluger patent a 1961 § 102(e) date for subject matter not adequately disclosed in the earlier applications.

## Issues

1. Whether a patent can be treated as § 102(e) prior art as of an earlier filing date under § 120 for subject matter that was added as new matter in a later continuation-in-part and not disclosed in the earlier application in a § 112-compliant manner.
2. Whether the § 103 obviousness rejection could stand when it depended on giving the reference patent an improperly early § 102(e) effective date.

## Decision

- The court reversed the Board’s affirmance of the § 103 rejection.
- The court held the Pfluger patent could not be accorded the 1961 filing date for § 102(e) prior-art purposes for the relied-upon limitation because that limitation was not adequately disclosed in the earlier application(s) under § 112.
- Because the PTO’s obviousness theory depended on using Pfluger as earlier-dated “secret prior art,” the rejection of claims 37, 38, and 44 was not sustained.

## Legal Principles

- A reference patent may obtain an earlier effective prior-art date under § 102(e) via § 120 only to the extent the earlier application provides written description and enablement support for the relied-upon subject matter as required by § 112 (first paragraph).
- Subject matter first introduced as new matter in a continuation-in-part cannot receive the benefit of an earlier filing date for § 102(e) prior-art purposes.
- For § 103 analysis that relies on a reference patent’s § 102(e) date, the PTO must establish the correct effective filing date for the specific disclosure being used as prior art, not merely the earliest filing in the application chain.

## Conclusion

The court rejected the PTO’s attempt to use a later-added continuation-in-part disclosure as if it were prior art dating back to an earlier filing, holding that § 102(e) prior-art effect via § 120 is limited to disclosures supported in the earlier application under § 112; without that support, the § 103 rejection failed.


In re Wertheim, 646 F.2d 527 (C.C.P.A. 1981)