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A Patent Specification Is Not “New Evidence” When Submitted as Evidence of Priority

December 05, 2007

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Last Month at the Federal Circuit - January 2008

Judges: Rader, Schall, Moore (author)

[Appealed from: Board]

In In re Garner, No. 07-1221 (Fed. Cir. Dec. 5, 2007), the Federal Circuit affirmed the Board’s decision in which the Board awarded judgment against Harold R. Garner for failure to make a prima facie showing of priority. Garner is the inventor of U.S. Application No. 09/998,341. During prosecution, he copied claims of U.S. Patent No. 6,480,324 (“the ’324 patent”) to provoke an interference. Garner had the burden of establishing priority since the effective filing date of his application was later than the effective filing date of the ’324 patent.

Garner attempted to establish priority by showing an actual reduction to practice of an invention within the proposed count before the ’324 patent’s effective filing date. Garner submitted a declaration that he executed in 2001 and that he had submitted under 37 C.F.R. § 1.131 in a parent application to overcome a prior art rejection (“2001 Garner declaration”). To corroborate his claim that he had built the device depicted in photographs that were included in the 2001 Garner declaration, Garner also submitted a declaration of John Fondon (“Fondon declaration”). In response to a letter sent by the examiner that his 2001 declaration was “insufficient” to provoke an interference under 37 C.F.R. § 41.202(d) (“Rule 202(d)”), Garner retitled his 2001 declaration to be a “Rule 202(d) declaration,” re-executed it, and filed it without making any substantive changes. Garner also resubmitted the Fondon declaration without change. The Examiner forwarded Garner’s request to provoke an interference to the Board.

The Board found Garner’s filing insufficient to establish a prima facie showing of priority. It declared an interference, but issued an Order to Show Cause why judgment should not be entered against Garner. In response to the Board’s order, Garner relied on three items that he did not submit previously: (i) a declaration filed in 2003 in an attempt to overcome a prior art rejection (“2003 Garner declaration”); (ii) the specification of his provisional application; and (iii) the specification of his utility application. The Board found that these three items were “new evidence” under Rule 202(d) and that Garner had not attempted to show good cause for his belated reliance. Accordingly, the Board entered judgment against Garner. Garner appealed.

Garner argued that the Board’s interpretation of “new evidence,” namely, that the 2003 Garner declaration and the provisional and utility patent specifications were new evidence, was incorrect. Garner asserted that the Board’s interpretation of “new evidence” under Rule 202(a)(5) conflicted with its interpretation of “new evidence” under Rule 202(d)(2). Rule 202(a)(5) requires an applicant suggesting an interference to “provide a claim chart showing the written description for each claim in the applicant’s specification,” while Rule 202(d)(2) excludes new evidence in support of priority unless good cause is shown. Slip op. at 5. Garner argued that under the PTO’s interpretation, the Board is expected to consider the specification of the application at issue when evaluating the applicant’s claim chart under Rule 202(a)(5) but not when considering the applicant’s sufficiency under Rule 202(d), unless the specification was submitted to the PTO as part of the applicant’s initial showing.

Agreeing with Garner, the Federal Circuit observed that an agency’s interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation. It noted that since there had been no previous interpretation of Rule 202(d), the Board’s interpretation is reviewed to determine whether it is plainly erroneous or inconsistent with the regulation.

The Court explained that both Rule 202(a)(5) and Rule 202(d) addressed elements an applicant must satisfy to provoke an interference and that there was no textual support for reading these two subsections separately for purposes of evidentiary submissions. It observed that Rule 202(d) restricted the admission of new evidence generally and that all of the specific requirements the applicant must satisfy to suggest an interference pertained to that ultimate function, and that nothing in Rule 202(d) suggested otherwise. It concluded that the Board’s interpretation of “new evidence” was inconsistent with the regulation, as the Board interpreted Rule 202 in a way that required it to consider the specification under 202(a), but not under 202(d), unless the applicant resubmitted the application. It added that because the specifications were already before the Board in the interference proceeding pursuant to Rule 202(a), they could not be “new evidence” under Rule 202(d) and that the Board erred when it concluded otherwise. The Court noted, however, that the Board’s holding that the 2003 Garner declaration constituted “new evidence” was not plainly erroneous or inconsistent with the regulation.

Nonetheless, the Federal Circuit found that even with the specifications in evidence, Garner failed to establish a prima facie showing of priority. It noted that in order to establish an actual reduction to practice, the inventor must prove that (1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its invented purpose. The Court added that an inventor’s testimony as to the facts of invention must be corroborated by independent evidence. Applying these principles, the Court explained that Garner’s submissions to the Board did not sufficiently corroborate his claim of actual reduction to practice. It noted that while the Fondon declaration stated that Fondon saw the device, it did not state that the device operated or worked for its intended purpose. Accordingly, the Court held that the Board’s ultimate holding regarding the insufficiency of Garner’s showing was supported by substantial evidence and that the Board’s failure to consider the specifications was harmless error.