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April 20, 2010

Short Straw

09/310,880 (Harari) traced its priority date linage back to June 8, 1988. 5,828,601 (Hollmer) was filed December 1, 1993, with no antecedent. So how do these two get into an interference, and Harari's claim to invention draws the short straw? USPTO incompetence!

Eliyahou Harari and Sanjay Mehrotra v. Shance C. Hollmer and Lee E. Cleveland (CAFC 2009-1406) precedential

During the interference proceeding, Harari filed a motion seeking the benefit of the original filing date of the parent application under 35 U.S.C. § 120. Hollmer filed a competing motion asserting that all claims in the '880 application were unpatentable for lack of written description under 35 U.S.C. § 112, first paragraph. The Board granted Hollmer's motion, finding the claims unpatentable. The Board then dismissed Harari's motion on the grounds that it lacked standing to proceed further in the interference.

This happened because the patent office refused to acknowledge '880's lineage.

The disputed '880 patent application claims priority to a chain of patent applications, beginning with U.S. Patent Application No. 07/337,566 ("'566 application") (abandoned).

The '566 application was filed on the same day as U.S. Patent Application No. 07/337,579 ("'579 application"), and contained the statement:

Optimized erase implementations have been disclosed in two copending U.S. patent applications. They are copending U.S. patent applications, Serial No. 204,175, filed June 8, 1988, by Dr. Eliyahou Harari and one entitled "Multistate EEprom Read and Write Circuits and Techniques," filed on the same day as the present application, by Sanjay Mehrotra and Dr. Eliyahou Harari. The disclosures of the two applications are hereby incorporated by reference.

Other evidence in the '880 application indicated lineage to include '579.

The examiner ignored the evidence, disregarded the relevant portion of MPEP, and disallowed the incorporation by reference. The patent Board backed the examiner. Sounds like a normal workday at the USPTO.

The examiner conducting the interference noted that the inventors' declaration did not refer to the preliminary amendment, and therefore did not treat the preliminary amendment as part of the original disclosure under 37 C.F.R. § 1.63. But see 37 C.F.R. § 1.115(a)(1)(2004) ("A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application."). The examiner rejected the preliminary amendment's incorporation of content from the '579 application as new matter under 35 U.S.C. § 132, finding that the original disclosure did not clearly identify the '579 application as being incorporated by reference.

Harari appealed to the BPAI. The Board agreed with the examiner.

On to appeal -

Whether and to what extent a patent incorporates material by reference is a question of law reviewed de novo. Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376 (Fed. Cir. 2006).

Prior to 2004, the effective date of 37 C.F.R. § 1.115(a)(1), a preliminary amendment was not automatically considered part of the original disclosure of the application with which it was filed. Nonetheless, at the time Harari filed the '808 application, examiners were instructed to enter all amendments, whether part of the original disclosure or not. See Manual of Patent Examining Procedure 608.04(a) (7th ed., July 1998) ("MPEP"). If an amendment was not part of the original disclosure, the examiner then determined whether that amendment included new matter. Id. In the context of a continuation application, the examiner's inquiry was whether the amendment added to the continuation application "anything which would constitute new matter if inserted in the original application." Id. at 201.07; 37 C.F.R. § 1.53(b).

We agree with Harari that the '880 application as filed adequately incorporates the '579 application by reference, and does not constitute new matter. The Board's analysis to the contrary is flawed in several ways.

The BPAI was a helpless whiner.

First, in rejecting the preliminary amendment as new matter, the Board failed to compare the content of the preliminary amendment against the initial parent application. MPEP 201.07; 37 C.F.R. § 1.53(b).

In addition to failing to compare the preliminary amendment to the initial parent disclosure, the Board appears to have applied the wrong standard in determining that the incorporation language was confusing.

We are not swayed by the Board's allegation that deciphering the identity of the incorporated reference would require a massive investigation and extensive detective work into external documents. At this stage of the examination, the examiner's determination is not confined to the photocopy of the initial parent disclosure on its face, nor does it require investigation beyond the documents filed. The examiner is presented with a transmittal sheet identifying the nature of the documents submitted and a preliminary amendment with "remarks" section explaining what documents are before the examiner and how they relate to each other.

Reversed and remanded.

Posted by Patent Hawk at April 20, 2010 12:03 PM | Interference

Comments

A really bad example of the Board of Interferences being "Mickey Mouse" about the incorporatio by reference standard. Fortunately, the Federal Circuit panel blew right through the feeble arguments offerred by the Board for it's nonsensical view.

Posted by: EG at April 21, 2010 9:12 AM

Once again, recall what the USPTO says:

"We're from the government and we're here to help you ... BTW, what's in Your wallet? Them look to us like appeal and RCE fees."

Posted by: step back at April 21, 2010 4:09 PM