The “detailed particularity” required for incorporation of material into a prior art document can be shown by the prior art document mentioning features disclosed only in the incorporated material itself. Here, for example, a “capacitance-multiplying converter” absent from the express embodiments of a prior art reference was found to be nevertheless included via incorporation by reference of another document because the prior art reference mentioned such a converter in the incorporated material by its reference number (which did not exist in the prior art document itself). “A host document incorporates material by reference if it ‘identif[ies] with detailed particularity what specific material it incorporates and clearly indicate[s] where that material is found in the various documents.’” This would be a good case to consult and cite in response to an anticipation rejection that relies on material absent from but purportedly incorporated by reference into the main prior art reference.
Background / Facts: The patent on appeal here from inter partes reexamination at the PTO is directed to a direct current-to-direct current (“DC-to-DC”) power converter that takes direct current power as input and outputs direct current at a different voltage level. The prior art reference cited as being anticipatory does not expressly disclose the capacitance-multiplying converter of the claimed invention, but does purport to incorporate by reference another document having an alternative embodiment with the missing capacitance-multiplying converter.
Issue(s): Whether the cited reference sufficiently identifies specific portions of the incorporated reference’s teachings with the “detailed particularity” required for incorporation.
Holding(s): Yes. “[T]he two patents teach an isolation stage that is nearly identical,” and, “[m]ost compellingly, [the cited reference’s] specification refers to the ‘capacitance-multiplying converter 20’ even though no item 20 is labeled in its own figures. Instead, the converter is labeled in Figure 4 of [the incorporated reference].” Accordingly, “[a] person of ordinary skill in the art would have understood that [the cited reference] identifies the capacitance-multiplying converter in [the incorporated reference] with detailed particularity. We therefore hold that [the cited reference] incorporates by reference at least those teachings of [the incorporated reference] that relate to its capacitance-multiplying converter []. The incorporated teachings include [the incorporated reference’s] alternative embodiment, which teaches a substitution that takes place within the isolation stage.”