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Failure to Copy Claim Within One Year of Patent Grant Bars Interference

January 29, 2002

Decision icon Decision

Last Month at the Federal Circuit - February 2002

Judges: Linn (author), Newman, and Archer

In In re Berger, No. 01-1129 (Fed. Cir. Jan. 9, 2002), the Federal Circuit affirmed the Board’s decision upholding the Examiner’s rejection of claims under 35 U.S.C. §§ 135(b), 102(e), and 112, second paragraph. The Court held that a claim copied for the purpose of provoking an interference must be present in the application within one year of the grant date of the patent with which the interference is sought.

Berger filed a patent application on September 30, 1994, containing claims directed to a beverage container having an indentation on the side wall for accommodating the lower lip of a consumer in order to minimize spillage when the consumer drinks from the container. In an amendment filed June 2, 1995, Berger added additional claim 7, attempting to provoke an interference with U.S. Patent No. 5,301,830 (“the Muller patent”), granted to Muller on April 12, 1994.

The Examiner issued a final Office Action, rejecting claim 7 under 35 U.S.C. § 135(b) for not having been copied within a year of the grant date of the Muller patent; rejecting claim 7 under 35 U.S.C. § 102(e) as being anticipated by Muller; and rejecting claims 1-4 and 8-20 under 35 U.S.C. § 112, second paragraph, as being indefinite.

In response, Berger simultaneously filed an amendment under 37 C.F.R. § 1.116(a) and an appeal brief to the Board. In the appeal brief, Berger argued that because the originally filed claims were filed within a year of Muller’s grant date, later-added claim 7 was also entitled to the filing date as a basis for provoking an interference. Berger also argued that the rejections under § 112, second paragraph, were moot in view of the amendment after final rejection. The Examiner, however, refused to enter the amendment after final rejection, finding that the amendment did not place the claims in better form for appeal because at least several § 112 problems remained and that the changes raised new issues. The Examiner also noted that the amendment attempted to add additional claims without canceling an equal number of finally rejected claims.

In an attempt to overcome these problems, Berger filed a second amendment after final, which the Examiner also refused to enter for similar reasons.

In affirming the Examiner, the Board concluded that new claim 7 was substantially different than claims 1-6 and, therefore, was not entitled to the earlier date. With respect to the rejections under § 112, second paragraph, the Board found that Berger had failed to contest the rejections because Berger had merely argued that they were moot in light of the amendments after final rejection. The Board also found that the Examiner’s decision not to enter the after-final amendments was a proper exercise of an examiner’s discretion and was not appealable to the Board.

On appeal, Berger argued that 37 C.F.R. § 1.601(n) provides that if claims filed within the one-year bar render the copied claim obvious, then the copied claim may still provoke an interference. The Federal Circuit, however, rejected this argument, holding that the claims presented within a year of the patent grant must not differ in any “material limitation” as required under 35 U.S.C. § 135(b). The Court also concluded that § 1.601(n) was formulated to define the extent of interfering subject matter as between applications of potentially conflicting parties only after the other prerequisites for an interference are satisfied.

Applying the standard set forth under § 135(b), the Court affirmed the Board’s finding, concluding that Berger’s originally filed claims 1-6 did not include a material limitation present in copied claim 7. The Federal Circuit was not persuaded by Berger’s arguments that the missing material limitation of claim 7 was either equivalent or inherent to structures recited in originally filed claims 1-6.

With respect to the § 102(e) rejection of claim 7, the Federal Circuit affirmed the Board’s decision to uphold the Examiner’s rejection because although Berger had submitted an affidavit under 37 C.F.R. § 1.131 in an attempt to swear behind the Muller patent, a § 1.131 affidavit cannot be used to swear behind a U.S. patent claiming the same patentable invention.

With respect to the rejection of Berger’s claims under § 112, second paragraph, the Federal Circuit held that Berger had effectively waived argument on this issue by failing to contest the § 112 rejections in his appeal to the Board. Berger instead had argued that the rejections under § 112 would have been rendered moot had his amendments submitted after final rejection been entered. Since the amendments were not entered and Berger had not opposed the § 112 rejections, the rejections stood.

Finally, responding to Berger’s argument that the Examiner had abused his discretion by refusing to enter the amendments after final rejection, the Federal Circuit agreed with the Board that this issue is not properly reviewed by the Board or the Federal Circuit. The proper avenue for review is by petition to the Commissioner under 37 C.F.R. § 1.181.