United States Court of Appeals 

for the Federal Circuit ______________________ 

NATURAL ALTERNATIVES INTERNATIONAL, 

INC.,

Appellant

v.

ANDREI IANCU, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2017-1962

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/002,001.

______________________ 

Decided: October 1, 2018

______________________ 

SCOTT A. M. CHAMBERS, Porzio, Bromberg & Newman, 

PC, Washington, DC, argued for appellant. Also represented by RICHARD J. OPARIL, KEVIN M. BELL, BILLY DELL 

CHISM; MATTHEW ZAPADKA, Bass, Berry & Sims, PLC, 

Washington, DC. 

 MARY L. KELLY, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 
2 NATURAL ALTERNATIVES v. IANCU

intervenor. Also represented by THOMAS W. KRAUSE,

ROBERT J. MCMANUS, AMY J. NELSON. 

______________________ 

Before PROST, Chief Judge, MOORE and REYNA,

Circuit Judges.

PROST, Chief Judge. 

Woodbolt Distributors, LLC (“Woodbolt”) requested 

that the United States Patent and Trademark Office 

(“PTO”) reexamine U.S. Patent No. 8,067,381 (“the ʼ381 

patent”) owned by Natural Alternatives International, 

Inc. (“NAI”). The PTO ordered inter partes reexamination, and the examiner rejected the challenged claims as 

anticipated by or obvious over cited prior art, including a 

parent of the reexamined patent. NAI appeals the Patent 

Trial and Appeal Board’s (“Board”) final determination 

affirming the examiner’s rejections and its subsequent 

denial of NAI’s request for rehearing. Woodbolt is not a 

party to this appeal. The Director of the PTO has intervened to defend the Board’s decision. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). We affirm. 

BACKGROUND

Between 1997 and 2011, NAI filed a chain of eight 

U.S. patent applications generally directed to increasing 

athletes’ endurance. The eighth application matured into 

the ʼ381 patent, the subject of this appeal. NAI filed the

first application in the chain on August 12, 1997, and 

within five years, it had filed three more. In each such 

continuing application, NAI included a priority benefit 

statement under 35 U.S.C. § 120 claiming priority back to 

the filing date of the first U.S. application, which eventually issued on October 12, 1999, as U.S. Patent No. 
NATURAL ALTERNATIVES v. IANCU 3

5,965,596 (“the ʼ596 patent”).1 NAI also filed a provisional application (“the 2003 provisional application”) on April 

10, 2003, while the fourth application was still pending 

before the PTO. Before the fourth application issued on 

January 20, 2004, NAI filed the fifth application, a continuation-in-part, on November 18, 2003. The fifth application claimed priority to the fourth through first 

applications and to the 2003 provisional application. 

Intervenor’s Br. 4–5. NAI filed its sixth application on 

August 29, 2008, during the fifth application’s pendency. 

At that time, the sixth application correctly claimed 

priority to the fifth application, and the fifth application 

correctly claimed priority to the fourth application, and so 

on. 

I 

On September 2, 2008, just four days after filing its 

sixth application, NAI amended the “Cross Reference of 

Related Applications” section of the fifth application to 

delete the benefit claim to the fourth through the first 

applications and to claim priority under 35 U.S.C. § 119(e) 

to only the 2003 provisional application. J.A. 8035; see 35 

U.S.C. § 119(e) (governing claiming priority to an earlierfiled provisional application). Thus, when the fifth application issued as U.S. Patent No. 7,504,376 (“the ʼ376 

patent”) on March 17, 2009, it claimed the benefit of only 

the 2003 provisional application’s filing date. The sixth 

through the eighth applications subsequently issued as 

patents, but with a statement seeking the benefit of the 

 

1 Each U.S. application in the chain also included a 

priority benefit statement under 35 U.S.C. § 119(a), 

claiming priority back to the filing date of a British patent 

application that NAI filed in 1996 (“the 1996 British 

application”). The validity of that priority claim is not 

before us today, so we do not discuss it. 
4 NATURAL ALTERNATIVES v. IANCU

fifth through the first applications, in addition to the 2003 

provisional application. The ʼ381 patent on appeal here

issued from the eighth application on November 29, 2011. 

II

District court litigation involving the ʼ381 patent

commenced between NAI and Woodbolt in December 

2011.2 In May 2012, during that proceeding, Woodbolt 

sought inter partes reexamination of the asserted patent 

claims.3 The request alleged that “the asserted claim to 

priority of the ʼ381 Patent is defective” because the “applicants deliberately and expressly terminated their claim 

to the priority of the first four applications[,]” which thus 

“broke[] the chain of priority between the Fourth and 

Fifth Applications.” J.A. 45–46. During reexamination, 

NAI did not dispute that it had waived priority to the 

fourth through the first applications in its fifth application. J.A. 971. But it insisted that the sixth application 

maintained priority back to the first application because 

NAI did not amend the “Cross Reference of Related Applications” in the sixth application. According to NAI, it was 

irrelevant what happened to the fifth application once the 

sixth application became entitled to the first application’s 

filing date. J.A. 975. Unpersuaded, the examiner finally 

rejected the reexamined claims in view of prior art including the ʼ596 patent (i.e., the patent that issued from the 

 

2 Woodbolt and NAI have since settled their lawsuit 

concerning the ʼ381 patent. See Appellant’s Br. 1.

3 Under the Leahy-Smith America Invents Act, inter partes review replaced inter partes reexamination as 

the avenue for third-party patentability challenges in the 

PTO. See Pub. L. No. 112–29, § 6(a), 125 Stat. 284, 299–

304 (2011).
NATURAL ALTERNATIVES v. IANCU 5

first application), and then closed prosecution.4 J.A. 1210, 

1226. 

NAI appealed the examiner’s decision to the Board. 

The Board determined that when NAI filed the eighth 

application, “[t]he fifth application [was] not entitled to 

the benefit of the fourth application since the specific 

reference to the fourth application was deleted in the 

fifth.” J.A. 13. Because the eighth application claimed 

priority to the first application via the fifth application,

the Board determined that the eighth application (and 

thus the ʼ381 patent) was also not entitled to the benefit 

of the fourth through the first applications. See J.A. 16. 

The Board issued a final written determination affirming 

the examiner’s rejections and denied NAI’s request for 

rehearing. 

DISCUSSION

NAI challenges the Board’s priority determination.5 

According to NAI, the Board erred by denying the ʼ381 

patent priority back to the first U.S. application in the 

priority chain under § 120. Appellant’s Br. 2–3. 

I 

Entitlement to priority under § 120 is a legal determination based on underlying fact findings. See In re 

Owens, 710 F.3d 1362, 1366 (Fed. Cir. 2013). When the 

underlying facts are undisputed, priority date determination is purely a legal question. Medtronic CoreValve v. 

Edwards Lifesciences Corp., 741 F.3d 1359, 1363 (Fed. 

 

4 The eighth application is a “Continuation of a 

Continuation of the Sixth Application/Patent[.]” See

Appellant’s Br. 26–27; Intervenor’s Br. 3–5.

5 NAI’s challenge to the Board’s finding of anticipation relies entirely on the priority date issue. See Appellant’s Br. 3 n.2, 46–47.
6 NATURAL ALTERNATIVES v. IANCU

Cir. 2014). Because this appeal presents no disputed 

factual issues relevant to the Board’s priority determination, we review the Board’s legal conclusions de novo. See 

Stevens v. Tamai, 366 F.3d 1325, 1330 (Fed. Cir. 2004). 

II

NAI argues that the Board erred by denying the ʼ381 

patent priority back to the first U.S. application in the 

priority chain. See Appellant’s Br. 46–47. Its argument

proceeds in four parts. First, NAI contends that priority 

to the first application “vested” with the sixth application

once the sixth application met all the criteria of § 120. 

See id. at 31–34. Second, NAI claims that this is so—even 

though an intervening application waived priority to the 

first application—because a waiver of priority is limited to 

the instant application and does not extend to subsequent 

applications. Id. at 35–36. Third, in NAI’s view, the 

Board reached a contrary determination because the 

Board erroneously viewed priority as a single growing 

chain rather than multiple fixed chains. Appellant’s Br. 

34, 38. Fourth, such a view, according to NAI, “limits an 

applicant’s ability to seek protection” when “amending [a] 

priority claim to gain [patent] term.” Id. at 38. We address each part of NAI’s argument in turn. 

A

NAI first argues that the Board erred in its determination that “priority does not ‘vest.’” Id. at 33. According 

to NAI, “[p]riority properly vested by virtue of meeting all 

the requirements of § 120.” Id. at 34. NAI asserts that 

Loughlin v. Ling dictates this conclusion because it states 

that “[p]rovided the criteria in § 120 are met, applications 

‘shall,’ without exception, receive the benefit of the earlier 

filing date.” 684 F.3d 1289, 1293 (Fed. Cir. 2012); see

Appellant’s Br. 31. The Board considered this argument

and found it unpersuasive. See J.A. 12. 
NATURAL ALTERNATIVES v. IANCU 7

Section 120 of title 35 sets forth requirements for a 

U.S. patent application to claim priority based on an 

earlier-filed nonprovisional application. See Medtronic 

CoreValve, 741 F.3d at 1363. When NAI filed the application that became the ʼ381 patent, § 120 provided the 

following: 

An application for patent for an invention [1] disclosed in the manner provided by section 112(a) 

. . . [2] 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, [3] 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 [4] if it 

contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier 

filed application under this section unless an 

amendment containing the specific reference to 

the earlier filed application is submitted at such 

time during the pendency of the application as required by the Director. The Director may consider 

the failure to submit such an amendment within 

that time period as a waiver of any benefit under 

this section. 

35 U.S.C. § 120 (2000) (emphases and numbering added). 

“Specific reference,” in the context of § 120, means that 

the application seeking the benefit must state (or be 

amended to state) that it claims the benefit of the earlierfiled application’s filing date, identifying each earlier-filed 

application by number and explaining how the applications are related to one another. Droplets, Inc. v. 

E*TRADE Bank, 887 F.3d 1309, 1315–16 (Fed. Cir. 2018). 
8 NATURAL ALTERNATIVES v. IANCU

NAI’s “vesting” argument conflates properly claiming 

priority and demonstrating entitlement to priority. 

Patent claims “are not entitled to an earlier priority date 

merely because the patentee claims priority.” In re NTP, 

Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). Rather, “for a 

patent’s claims to be entitled to an earlier priority date, 

the patentee must demonstrate that the claims meet the 

requirements of 35 U.S.C. § 120.” Id. (emphasis added). 

Accordingly, claims in a patent or patent application are 

not entitled to priority under § 120 at least until the 

patent owner proves entitlement to the PTO, the Board, or 

a federal court. See PowerOasis, Inc. v. T-Mobile USA, 

Inc., 522 F.3d 1299, 1305–06 (Fed. Cir. 2008) (explaining 

that “when neither the PTO nor the Board has previously 

considered priority, there is simply no reason to presume 

that claims in a [continuation-in-part] application are 

entitled to the effective filing date of an earlier filed 

application,” so the district court may place the burden on 

the patent owner to “come forward with evidence to prove 

entitlement to claim priority to an earlier filing date”); see 

also In re NTP, Inc., 654 F.3d at 1277 (“[W]hen a patentee 

argues that its claims are entitled to the priority date of 

an earlier filed application, the examiner must undertake 

a priority analysis to determine if the patentee meets the 

requirements of § 120.”); Manual of Patent Examining 

Procedure (“MPEP”) § 201.08 (providing that “[t]he [PTO]

does not need to make a determination as to whether the 

[35 U.S.C. § 112(a)] requirement of 35 U.S.C. [§] 120” is 

met “unless the filing date of the earlier nonprovisional 

application is relied upon in a proceeding before the 

[PTO]”).

Furthermore, examiners and adjudicators cannot be 

expected to scrutinize the prosecution history of an application and each parent application to determine whether

the application would have met § 120’s requirements at 

any point during its pendency. See, e.g., Droplets, 887 
NATURAL ALTERNATIVES v. IANCU 9

F.3d at 1317 (explaining that “it would be improper to 

place the burden on the public to unearth and decipher a 

priority claim when the ‘patentee is the person best suited 

to understand the genealogy and relationship of her 

applications,’ and a ‘requirement for her to clearly disclose 

this information should present no hardship’”); see also

Medtronic CoreValve, 741 F.3d at 1366 (“Congress may 

well have thought that Section 120 was necessary to 

eliminate the burden on the public to engage in long and 

expensive search of previous applications in order to 

determine the filing date of a later patent.” (quoting 

Sticker Indus. Supply Corp. v. Blaw-Knox Co., 405 F.2d 

90, 93 (7th Cir. 1968))). 

In re Janssen Biotech, Inc. is instructive here. 880 

F.3d 1315 (Fed. Cir. 2018). In In re Janssen Biotech, the 

patentee attempted during reexamination to amend its

patent to delete a benefit claim to a parent application, 

among other proposed amendments. Id. at 1320. We 

noted that even though the patentee “had never received 

issued claims . . . on the subject matter originating from 

the [parent] application, more than thirty-two issued 

patents ‘reached through the [reexamined] patent for 

benefit of a prior filing date’ and ‘the patentability of 

those claims . . . cannot be determined without reopening 

examination of those patents in view of the deletion of the 

subject matter in the [reexamined] patent.” Id.; see id. at 

1323; see also Searle LLC v. Lupin Pharm., Inc., 790 F.3d 

1349, 1355 (Fed. Cir. 2015) (observing that if a patent 

owner had obtained foreign patent protection based on a 

Patent Cooperation Treaty (“PCT”) application, altering 

the scope of the PCT application could call into question 

the proper scope of those foreign patents). In short, we 

have previously acknowledged that amending an earlierfiled parent application may affect the priority of its child 

applications. 
10 NATURAL ALTERNATIVES v. IANCU

And we do so again here. The Board determined that

when filed, the eighth application did not meet the “specific reference” requirement of § 120 as to the filing date 

of the first application. J.A. 11–12. That was so, according to the Board, because the eighth application claimed 

the benefit of the first application’s filing date by way of 

the fifth application, and NAI had amended the fifth 

application to claim priority to only the 2003 provisional 

application. See id. In other words, because the fifth 

application lacked priority to the first application, the 

eighth application’s priority claim to the first application

(via the fifth application) did not satisfy all of § 120’s 

requirements. The Board, therefore, did not err in determining that the ʼ381 patent was not entitled to claim the 

benefit of the filing date of the first application under 

§ 120, as the priority claim in the ʼ381 patent was defective from the start. 

B 

Next, NAI avers that although “a claimed benefit to 

an earlier filing date may later be altered in the instant 

application according to MPEP § 201.11, . . . that alteration applies only to the instant application—not other, . . . applications.”6 Appellant’s Reply Br. 15. 

According to the MPEP, which is “commonly relied upon 

as a guide to patent attorneys and patent examiners on 

procedural matters,” Litton Sys., Inc. v. Whirlpool Corp., 

728 F.2d 1423, 1439 (Fed. Cir. 1984), “[a] cancellation of a 

benefit claim to a prior application may be considered as a 

showing that the applicant is intentionally waiving the 

benefit claim to the prior application in the instant appli-

 

6 Although outdated, we refer to MPEP § 201.11 to 

remain consistent with Appellant’s briefs. See, e.g., 

Appellant’s Reply Br. 7. The subject matter of § 201.11, 

however, now exists in MPEP § 211. 
NATURAL ALTERNATIVES v. IANCU 11

cation,” MPEP § 201.11(III)(G) (8th ed., Rev. 1) (2003) 

(emphasis added); MPEP § 211.02(a)(III) (9th ed., Rev. 7) 

(2015) (same). 

Although the Board did not explicitly address this argument, the PTO responds that NAI reads MPEP 

§ 201.11 “too narrowly.” Intervenor’s Br. 34–35. Specifically, the PTO notes that “the [MPEP] passage does not 

state that cancellation of a benefit claim may be considered a waiver in only the instant application.” Id. at 35. 

The PTO, applying this broader interpretation, asserts 

that “the intentional cancellation of a benefit claim pursuant to MPEP § 201.11 can similarly affect another 

application’s entitlement to a benefit claim.” Id. We 

agree with the PTO.

As an initial matter, we note that the MPEP “does not 

have the force of law[,]” Molins PLC v. Textron, Inc., 48 

F.3d 1172, 1180 n.10 (Fed. Cir. 1995), and does not bind 

us, Litton Sys., 728 F.2d at 1439. Nonetheless, we have 

reviewed MPEP § 201.11 and find that nothing in its text 

limits the scope of waiver to only the instant application. 

Indeed, § 201.11 does not contemplate all possible consequences of waiving a benefit claim in a particular application. Moreover, at least in the context of terminal 

disclaimers, the MPEP has explicitly indicated when a 

disclaimer applies only to the instant application and not 

to downstream applications. See, e.g., Hagenbuch v. 

Sonrai Sys., 2015 U.S. Dist. LEXIS 39083, *10–13 (N.D. 

Ill. Mar. 27, 2015) (explaining that “[t]he MPEP in effect 

in 1993 described the effect of a disclaimer that, by its 

terms, applied only to the ‘instant application’”); see also

MPEP § 1490(VI)(B) (9th ed., Rev. 8) (2017) (“A terminal 

disclaimer filed to obviate a nonstatutory double patenting rejection is effective only with respect to the application or patent identified in the disclaimer unless by its 

terms it extends to continuing applications . . . .”). 
12 NATURAL ALTERNATIVES v. IANCU

C 

Further, NAI summarily concludes that “[r]ather than 

the dogmatic view of seeing additional continuation filings 

merely adding an additional link in a single growing 

chain, § 120, and the case law, must be interpreted as 

providing for a new priority chain being created at each 

new filing.” Appellant’s Br. 34. 

NAI, however, neither explains why § 120 compels 

this interpretation of priority claims nor provides any case 

law to support its conclusion. Nor does NAI provide any 

argument to undermine the long-standing interpretation 

of priority as a single chain, growing with each additional 

continuation. The Supreme Court has previously explained that under § 120, parent and continuing applications “are to be considered as parts of the same 

transaction, and both as constituting one continuous 

application, within the meaning of the law.” Godfrey v. 

Eames, 68 U.S. 317, 326 (1863); see also Sticker Indus., 

405 F.2d at 93 (stating that “each application in a long 

chain grows out of the one immediately preceding it”). We 

therefore decline to adopt NAI’s interpretation of chain of 

priority.

D 

Finally, NAI argues that the Board’s determination 

impermissibly “limits an applicant’s ability to seek protection” when “amending the priority claim to gain [patent] 

term.” See Appellant’s Br. 38. NAI’s argument suggests 

that NAI need not trade the benefit of an earlier filing 

date in order to gain patent term. See id. at 36 (arguing 

that by waiving priority in the parent application, it was 

not waiving priority in the child application). Although 

the Board did not explicitly address this argument, the 

PTO asserts that because NAI “chose to delete the benefit 

claim in its fifth U.S. application and thereby obtained a 

longer term for the patent issuing therefrom[,]” a “consequence of this voluntary action is that [NAI’s] sixth 
NATURAL ALTERNATIVES v. IANCU 13

through eighth U.S. applications would no longer be 

entitled to the benefit of the filing date of its fourth 

through first U.S. applications.” Intervenor’s Br. 14. 

Again, we agree with the PTO.

Continuation-in-part (“CIP”) applications, like the 

fifth application in this case, uniquely highlight the tradeoff between priority and patent term.7 In CIP applications, priority is assessed on a claim-by-claim basis. 

Transco Prods., Inc. v. Performance Contracting, Inc., 38 

F.3d 551, 557 n.6 (Fed. Cir. 1994). An applicant can 

obtain an earlier effective filing date for claims in a CIP 

application only if those claims find support in an earlierfiled nonprovisional application. Id. Claims reciting new 

matter, however, are entitled to only the filing date of the 

CIP application and not to the filing date of the earlierfiled application. Id. Because the standard patent term 

is twenty years after an application’s earliest-claimed

priority date, see 35 U.S.C. § 154(a)(2) (emphasis added),8

the claims reciting new matter are not entitled to the 

parent application’s earlier filing date, and they therefore 

have a truncated patent term (i.e., less than twenty

 

7 “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application

. . ., repeating some substantial portion or all of the earlier nonprovisional application and adding matter not 

disclosed in the said earlier nonprovisional application.” 

Univ. of W. Va. v. Van Voorhies, 278 F.3d 1288, 1297 (Fed. 

Cir. 2002). 8 As of June 8, 1995, see Uruguay Round Agreements Act, Pub. L. No. 103–465, § 532, 108 Stat. 4809, 

4984 (1994), U.S. applications that claim priority to an 

earlier-filed U.S. application will have a patent term of 

twenty years from the filing date of the earliest U.S. 

application to which it claims a priority benefit. 35 U.S.C. 

§ 154(a)(2). 
14 NATURAL ALTERNATIVES v. IANCU

years). See 5 Donald S. Chisum, Chisum on Patents 

§ 16.04[6][b] (2016).

An uncommon but permissible way for patent applicants to avoid losing term on claims that recite new 

matter is to disclaim the benefit of earlier filing dates. 

See MPEP §§ 211.02(a)(III). Thus, by deleting the benefit 

claim in a CIP application, the twenty-year patent term of 

the patent issuing from that CIP application would extend from the CIP application’s filing date instead of the 

parent application’s earlier filing date. See id. Of course, 

once the CIP application adopts the later filing date, the 

CIP application and its children become vulnerable to 

rejections based on a larger pool of prior art—including 

former parent applications in some cases. See, e.g., Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1352 (Fed. 

Cir. 2012) (finding that “[d]ue to breaks in the chain of 

priority,” the “[parent] patent [was] prior art for some of 

the asserted claims”). 

Under NAI’s theory of priority, however, NAI could 

gain patent term on its fifth application while simultaneously shielding its child applications (including the eighth 

application) from their former parents. For the reasons 

discussed herein, NAI cannot have it both ways. 

III

 We have considered NAI’s remaining arguments and 

find them unpersuasive. For the foregoing reasons, the 

Board’s final decision invalidating the challenged claims 

is affirmed.

AFFIRMED