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Incorporation by Reference Statement Sufficiently Identified the Incorporated Material

April 19, 2010

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Last Month at the Federal Circuit - May 2010

Judges: Bryson, Archer, Prost (author)

[Appealed from: Board]

In Harari v. Hollmer, No. 09-1406 (Fed. Cir. Apr. 19, 2010), the Federal Circuit reversed the Board’s dismissal of Eliyahou Harari from an interference, finding that Harari’s claims were adequately supported by the specification as-filed because a contested incorporation by reference statement was adequate to incorporate an earlier filed priority application by reference. 

The disputed application, U.S. Patent Application No. 09/310,880 (“the ’880 application”) claims priority to a chain of patent applications, beginning with U.S. Patent Application No. 07/337,566 (“the ’566 application”).  The ’566 application contains the incorporation by reference statement as follows:

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.

Slip op. at 2.  A preliminary amendment filed with the ’880 application requested that this paragraph be amended to delete the “same day as the present application” language, and instead refer to the application by serial number and filing date (U.S. Patent Application No. 07/337,579 (“the ’579 application”)).  The preliminary amendment also requested that several paragraphs of text and the drawing sheets from the ’579 application be copied into the ’880 application, and added new claims that were supported, at least in part, by the ’579 application.  The Board held that one could not tell from the original disclosure whether the incorporation language referred to an application filed on the same day as the ’566 application or on the same day as the ’880 application, concluding that the incorporation language was so confusing that it could not support the insertion of information from the ’579 application into the ’880 disclosure. 

On appeal, the Federal Circuit held that the ’880 application adequately incorporated the ’579 application by reference.  The Court found that the Board failed to compare the content of the preliminary amendment against the initial parent application.  For example, at the time the ’566 application was filed, the copending and simultaneously filed ’579 application had not yet been assigned a serial number or awarded a filing date.  Thus, the title of the application, the named inventors, and the fact that the application was filed on the same day as the ’566 application constituted all of the identifying information available to the drafter of the ’566 application.  This information was sufficient to unambiguously identify and incorporate by reference the disclosure of the ’579 application into the disclosure of the ’566 application.  The Court found that the preliminary amendment filed in the ’880 application, which contained only content directly cut and pasted from the ’579 application, did not contain new matter compared to the initial parent application.  When properly entered, the preliminary amendment revised the disputed “present application” language of the incorporation by reference statement, resolving any alleged confusion. 

The Court also found that the Board applied the wrong standard for determining that the incorporation language was confusing.  The disputed continuation application was at the initial stage of filing, where the examiner is first presented with an original disclosure and a preliminary amendment.  The Court held that the proper standard by which to evaluate the sufficiency of incorporation by reference language, at this stage of the proceedings, is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented.  The Court noted, however, that “if we were determining the validity of an issued patent containing the disputed incorporation by reference statement, ‘filed on the same day as the present application,’ where that language actually refers to an application other than the one issued, then we would be concerned with whether one of ordinary skill in the art could identify the information incorporated.  The present case, however, does not involve an issued patent or language that is intended to appear in an issued patent.  Thus the proper lens though which to view the disputed language is that which is ascertainable to a reasonable examiner.”  Slip op. at 7 n.2.

The Court concluded that “[i]t is appropriate for an application to identify for the purposes of incorporation by reference a co-pending application by title, inventors, and a context-specific filing date, where such information is sufficient to identify the application at the time the information is presented.”  Id. at 9.  It is not new matter, and indeed it is strongly encouraged, to later amend the identifying language to recite a serial number and filing date, when that information becomes available.  The Court found that it makes no difference that the clarifying amendment was made for the first time by a preliminary amendment to a continuation application rather than during prosecution of the now abandoned initial parent application because no reasonable examiner would be confused as to what document was being identified in the incorporation by reference statement.  Nor would he be unable to determine on the merits whether the newly presented claims were supported by the originally filed (’566 application) disclosure.  Accordingly, the Court reversed the Board’s decision and remanded the case for further proceedings consistent with its opinion. 


Summary authored by Amelia Feulner Baur, Ph.D., student associate at Finnegan.