Prosecution Before the USPTO

Fed. Cir.: CIP cannot be converted to Divisional by amendment (posted 01/24/18)

In In re: Janssen Biotech, Inc., the Federal Circuit upheld a double patenting rejection in an ex-parte reexamination after Janseen, during the reexamination, amended the application to remove added subject matter. The PTO entered the amendments for purpose of reexam but did not confirm the status of the application as a divisional. If it were to be considered a divisional, it could not be invalidated for double patenting under a safe harbor provision of 35 U.S.C. § 121. However, the examiner held that the provision did not apply and maintained the double patenting rejection, which was upheld by the CAFC.

Fed. Cir. reverses district court's ruling requiring that continuations be filed at least one day before parent's grant (posted 06/21/16)

35 U.S.C. 120 (pre‑AIA) Benefit of earlier filing date in the United States:

An application for patent for an invention disclosed . . . in an application previously filed in the United States . . . which is 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, if filed before the patenting or abandonment of or termination of proceedings on the first application. . . .

In Immersion Corp. v. HTC Corp, The Federal Circuit reversed a lower court decision invalidating a patent because it was filed the same day as its parent application.

Stated the court:

The statutory language does not compel, though it certainly could support, adoption of a day as the unit of time for deciding if filing is “before” patenting. And history is decisive in permitting the same-day-continuation result, under which using units of time of less than a day, a “filing” is deemed to occur before “patenting.” The Supreme Court approved same-day continuations in 1863, and the 1952 Patent Act, which introduced section 120, was broadly a codification of existing continuation practices. And same-day continuations have been approved by a consistent, clearly articulated agency practice going back at least half a century, which has plausibly engendered large-scale reliance and which reflects the agency's procedural authority to define when the legal acts of “filing” and “patenting” will be deemed to occur, relative to each other, during a day. We reverse the district court’s contrary holding and remand.

Oral Arguments

Fed. Cir. defines "New Grounds" (10/22/13)

The CAFC may provide guidance in its decision In re Lutz Biedermann and Jurgen Harms.

In this case, the PTAB (then referred to as the BPAI) upheld the Examiner's rejection of the same claims on the same art and the same statutory basis, but provided a different rationale, relying on new facts, than the rationale provided and facts identified by the Examiner. The Appellant requested a rehearing, arguing that the Board issued a new ground of rejection. But the Board denied the rehearing and affirmed the examiner's rejection.

Judges Moore, Linn, and O'Malley remanded to the PTAB, stating that: “The articulated reasoning and factual underpinnings of an examiner's rejection are, thus, essential elements of any stated ground of rejection to which applicants are entitled to notice and a fair opportunity to respond” (emphasis added). The court quoted Leitham, 661 F.3d 1316:

[W]hile “the Board need not recite and agree with the examiner's rejection in haec verba to avoid issuing a new ground of rejection,” “[m]ere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner. This court's predecessor long acknowledged the right of the Board to make additional findings of fact based upon the Board's own knowledge and experience to fill in the gaps that might exist in the examiner's evidentiary showing. But the Board's power to do so is construed narrowly and when reliance upon such facts changes the thrust of the rejection, the Board's action does everything but cry out for an opportunity to respond.”

Burden shifts to Applicant when PTO provides "reasonable proof that a claim limitation is inherent (04/20/12)

In In re Mousa, the Fed. Cir. upheld the board's rejection of a chemical compound as anticipated by a reference said to describe a chemical compound with inherent properties to that claimed by Mousa. The Fed. Cir. stated, “The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. […] The Examiner meets this 'burden of production by “adequately explaining the shortcomings it perceives so that the applicant is properly notified and able to respond.”' […] The burden of proof then shifts to the applicant 'to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on'” (internal citations omitted).

Old News: PTO Announces Extended Missing Parts Program (01/04/11)

The PTO made effective as of December 8, 2010, a program for delaying action on a newly filed application. Requirements are as follows:

  1. The application must directly claim benefit to a provisional application.
  2. A nonpublication request must NOT be submitted.
  3. Basic filing fee, executed oath or declaration, and applicatoin papers that are in condition for publication (required within a 2-month extendable time period).
  4. A certification and request to participate in the Extended Missing Parts Pilot Program must be submitted with the non-provisional application.
    • This is required for duration of the pilot program, rather than applying to all applicants.
  5. Before the expiration of the 12-month period, the search fee, examination fee, any excess claim fees, and a surcharge ($130 for non-small entity) for late submission of the search and examination fees must be paid. The nonprovisional application will be published under existing 18-month publication provisions.

En banc denied in Boehringer - § 121 double patenting safe harbor maintained (05/07/10)

The CAFC recently denied a motion for an en banc rehearing of the previous decision by the CAFC, which upheld the safe harbor provisions of 35 U.S.C. § 121. In this case, of a related set of three patent applications the patentee's first application was subject to a ten-way restriction by the PTO. In two subsequent divisionals, the patentee included multiple patentably distinct inventions set forth in the restriction requirement of the first application. The PTO did not issue restriction requirements in the two divisionals and each issued as a patent claiming multiple distinct inventions identified in the PTO's initial restriction requirement. The district court held that that the patentee, Boehringer, could not seek shelter in § 121's safe-harbor provision and invalidated the third patent for obviousness-type double patenting based on the second patent. The CAFC panel decision reversed the district court, ruling that the

  1. patentee did not err in combining independent and distinct inventions in subsequent divisional applications, and
  2. the patentee's motivations for filing subsequent divisional applications were irrelevant so long as the later-filed claims could have been filed in the initial application absent the restriction requirement.

Plaintiff in § 145 Appeal cannot proffer evidence that he refused to provide the PTO (08/14/09)

35 U.S.C. 145 Civil action to obtain patent. An applicant dissatisfied with the decision of the Board of Patent Appeals and Interferences in an appeal under section 134(a) of this title may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the District of Columbia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Board of Patent Appeals and Interferences, as the facts in the case may appear, and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.

In Hyatt v. Doll, the Fed Cir., in an extensive opinion, upheld the district court's refusal to admit evidence that was previously requested by the PTO during prosecution, but not provided to the PTO. In this case, the plaintiff-applicant was repeatedly asked where in the jumbo application (238-page specification, 40 pages of drawings, incorporating by reference multiple publications, and 117 claims at the time of appeal) support could be found for numerous claim elements. Stated the court:

There is, under Alton, [1)] only one acceptable response to a written description rejection: showing the examiner where by column and line number in the specification he may find written description support for each disputed claim limitation. 2) Here, not only was Hyatt’s response to the written description rejections completely and wholly inadequate, it was willfully so. He simply refused to respond as required by Alton to the requests of the examiner for citations to the specification, and he clearly did so deliberately, thus impeding the examination the PTO is legally required to conduct.

The Fed. Cir. narrows its ruling:

The dissent incorrectly describes our decision as promulgating a “sweeping exclusionary rule.” See Dissent at 2. We have not adopted a “sweeping” or “per se rule.” See id. at 2, 15. We express no opinion as to admissibility of evidence in the multitude of variegated factual scenarios that may arise in the future which the dissent claims are decided today. The dissent also characterizes the majority opinion as standing for something that it does not: that evidence must be excluded simply because it could have been presented to the PTO. See Dissent at 10. Instead, we have merely reached the unremarkable conclusion that it is unreasonable to believe Congress intended to allow a patent applicant in a § 145 action to introduce new evidence with no regard whatsoever as to his conduct before the PTO, and that, specifically, Congress did not intend that evidence owed, 3) requested and willfully withheld from the PTO must nevertheless be admitted in a § 145 action.
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996)
35. The dissent complains about Hyatt’s burden of responding to, as the dissent calculates it, “2546 separate rejections.” Dissent at 18. The dissent does no acknowledge that this is proportional to Hyatt’s prosecution of an application containing 117 pending claims spanning 79 pages. See J.A. 10411-89.
34. The dissent’s claim that we hold that Hyatt “‘owed’ the PTO all evidence he possesses that is responsive to a rejection,” Dissent at 1-2 (emphasis added, citation omitted), is overbroad and illustrates the dissent’s misunderstanding of our holding.

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