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“Person of Ordinary Skill in the Art” Standard Applies in Evaluating Continuity of Disclosure in a Priority Chain

June 07, 2012

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Last Month at the Federal Circuit - July 2012

Judges: Prost (author), Mayer, O'Malley

[Appealed from: Board]

In Hollmer v. Harari, No. 11-1276 (Fed. Cir. June 7, 2012), the Federal Circuit reversed and remanded, because the Board misinterpreted the Court’s earlier decision in Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (“Harari I”), in finding that continuity was maintained in the chain of priority between two applications involved in an interference.

U.S. Patent Application No. 09/310,880 (“the ’880 application”), assigned to Eliyahou Harari and Sanjay Mehrotra (collectively “Harari”), is the fifth in a chain of continuation and divisional applications beginning with U.S. Patent Application No. 07/337,566 (“the ’566 application”), and continuing with U.S. Patent Application No. 07/963,838 (“the ’838 application”), then U.S. Patent Application No. 08/174,768 (“the ’768 application”), then U.S. Patent Application No. 08/771,708 (“the ’708 application”) just before the ’880 application. The original ’566 application was filed on the same day as U.S. Patent Application No. 07/337,579 (“the ’579 application”), also to Harari, and included a statement incorporating the ’579 application by reference. The incorporation language identified the ’579 application only by its title and as “copending” with and “filed on the same day as the present application.” Slip op. at 3 (emphasis and citation omitted).

The ’880 application included the same “incorporation by reference” statement as the original ’566 application, but was filed with a preliminary amendment adding material from the ’579 application and explicitly identifying the ’579 application in the “incorporation by reference” statement. The original incorporation statement from the ’566 application was also present in the intervening ’838 and ’768 applications. These intervening applications were not amended to identify the ’579 application by serial number and filing date.

During the interference, Shane C. Hollmer and Lee E. Cleveland (collectively “Hollmer”) argued that material incorporated into the ’880 application in the preliminary amendment constituted new matter because the ’579 application was not identified in the original disclosure, and that the claims of the ’880 application were therefore unpatentable for lack of written description. The Board agreed, but was reversed by the Federal Circuit in the first appeal, Harari I. In that appeal, the Court explained that a “reasonable examiner” standard applied when evaluating the sufficiency of the incorporation by reference at the initial filing stage, and concluded that a reasonable examiner would have understood the original incorporation statement to refer to the ’579 application.

On remand, the parties disputed whether the ’880 application was entitled to claim the benefit of the original ’566 application. Hollmer argued that Harari was not entitled to claim priority back to the ’566 application because the intervening ’838 and ’768 priority applications did not properly incorporate the ’579 application by reference, and therefore did not provide the continuity of disclosure required for a priority claim under 35 U.S.C. § 120. Applying the “reasonable examiner” standard of Harari I, the Board entered judgment against Hollmer.

In the instant appeal, the issue before the Federal Circuit was what standard should apply in reviewing whether such incorporation statements satisfy the continuity requirements of § 120.

The Court first noted that each application in a priority chain must comply with the written description requirement of 35 U.S.C. § 112. Hence, in order for the ’880 application to be entitled to claim priority to the ’566 application, the intervening ’838 and ’768 applications must have incorporated the ’579 application by reference. Further, the Court found that Harari I, which did not address the intervening applications, did not resolve this question. Moreover, Harari I dealt with a “narrow circumstance” for which the “reasonable examiner” standard was appropriate, i.e., when an initially filed application with ambiguous incorporation by reference language was before an examiner. In contrast, the appropriate standard when evaluating continuity of disclosure is that of the person of ordinary skill in the art. Finally, because § 120 requires that the disclosure actually appear within the specification, and because amendments in later applications cannot cure an otherwise defective application in the priority chain, the Court explained that the “incorporation by reference” analysis is constrained by the four corners of the application.

Applying the “person of ordinary skill” standard, the Court concluded that the incorporation language in the intervening applications did not identify the ’579 application with adequate particularity. First, those applications were neither “filed on the same day as,” nor “copending” with, the ’579 application. In addition, because there were at least two other applications by the same inventors that had the same title as the ’579 application and were copending with the ’838 application, the person of ordinary skill in the art would not have known which application the inventors intended to incorporate. Therefore, the ’880 application was not entitled to claim the benefit of the intervening ’838 and ’768 applications, or the original ’566 application.

Thus, the Court reversed the Board’s decision and remanded the case to the Board to enter judgment that the effective filing date of the ’880 application is the filing date of the immediately preceding application in the chain and for further proceedings consistent with its opinion.

Summary authored by Mayssam H. Ali, Ph.D., student associate at Finnegan.