CAFC interprets 35 USC 120 as to 35 USC 135(b)(2) in an interference

The issue in Loughlin v. Ling concerned an interference:

On May 13, 2004, Loughlin filed Application No. 10/845,624 (the “’624 application”). The ’624 application was published on November 18, 2004, as Publication No. 2004/0226324. On October 14, 2008, the ’624 application issued as the ’426 patent.

On February 5, 2007, Ling filed the ’404 application, which was granted priority benefit under § 120 from Application No. 10/759,413 (the “’413 application”), filed January 16, 2004. On February 21, 2007, Ling, seeking to provoke an interference, copied claims from Loughlin’s pending ’624 application.

Loughlin wasn't happy about the late filing of the '404 by Ling, but Ling prevailed:

We now turn to the merits of Loughlin’s appeal. We agree with Ling that the Board correctly interpreted § 135(b)(2) in view of the plain language of that statute and the benefit provision of § 120. The first sentence of § 120 permits an application to claim the benefit of an earlier filing date, such that the application is treated as having been effectively filed on the earlier date. The statute provides in relevant part:

An application for patent for an invention dis- closed in the manner provided by section 112(a) . . . in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application . . . .

35 U.S.C. § 120 (emphases added). Provided the criteria in § 120 are met, applications “shall,” without exception, receive the benefit of the earlier filing date. The statute does not limit its effect to only certain provisions under the patent laws. As our predecessor court explained, “[n]othing in § 120 limits its application to any specific grounds for rejection . . . .” In re Hogan, 559 F.2d 595, 604 (CCPA 1977).

Loughlin was unhappy that Ling waited to file the continuing application:

Loughlin argues that § 135(b)(2) is a “staleness” provision requiring a party who wishes to provoke an interference to do so in a timely manner, so that Ling, who waited more than two years after Loughlin’s application was published to file his application, should not benefit from § 120. We recognize the force of Loughlin’s point about timeliness, but it cannot prevail in light of § 120’s granting of priority benefit to any application meeting its requirements, which includes Ling’s application.

The CAFC reached back to an 1897 case:

Loughlin offers no convincing reason why the priority benefit under § 120 should not apply to “an application filed” under § 135(b)(2). At most, Loughlin asserts that the Board erred by construing § 135(b)(2) and § 120 in pari materia. As the Supreme Court has explained, however, “[a] party seeking a right under the patent statutes may avail himself of all their provisions, and the courts may not deny him the benefit of a single one.” United States v. Am. Bell Tel. Co., 167 U.S. 224, 247 (1897). In this case, as Ling’s ’404 application was entitled under § 120 to the benefit of the ’413 application for the subject matter of claim 31, it was “an application” for purposes of § 135(b)(2) as well. Ling was therefore entitled to avail himself of § 120 in overcoming the bar set forth in § 135(b)(2).