In In re Harold Garner, Civ Case. No. 2007-1221 (Fed. Cir. December 5, 2007), Calvin F. Quate and David Stern (collectively Quate) are the inventors of U.S. Patent No. 6,480,324, and Harold R. Garner is the inventor of U.S. Application Serial No. 09/998,341. Quate is the senior party in an interference proceeding between U.S. Patent No. 6,480,324 and U.S. Application Serial No. 09/998,341, and Garner is the junior party based on the effective filing date. Garner’s patent application was initially rejected based on the filing date of Quate. Garner attempted to establish a prior reduction to practice for his invention in his 2001 declaration that included: photos of the device he built before the filing date of that prior art reference and a lab notebook that allegedly showed that the device worked. John Fondon’s declaration executed on Oct. 20, 2005 was also submitted in a later filing. The evidence was submitted under Rule 131.
Initially, the Examiner found the 2001 declaration to be insufficient to provoke an interference under Rule 202(d). Garner re-titled his 2001 declaration to be a “Rule 202(d) declaration” re-executed and filed it. The Examiner forwarded this 202(d) declaration to the Board of Patent Appeals and Interferences (BPAI) to determine if there was an interference. The BPAI again found Garner’s filing insufficient to establish a prima facie showing of priority, but declared the interference per Rule 202(d). After declaring the interference, the BPAI issued an Order to Show Cause why judgment should not be entered against him. In response to the BPAI’s Order to Show Cause, Garner relied on three items that he did not submit in his original Rule 202(d) filing to show priority: (i) a 37 C.F.R. § 1.131 declaration filed on September 2, 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 BPAI found that these three items were “new evidence” that is not permitted under Rule 202(d) without a showing of good cause and that Garner had not attempted to show good cause for his belated reliance. Therefore, the BPAI issued judgment against Garner. Garner appeals the BPAI’s ruling on sufficiency and the Board’s definition of “new evidence.”
On appeal, the Federal Circuit first reviewed whether the provisional application was deemed new evidence as interpreted by the BPAI. While noting that the Federal Circuit only reverses the BPAI’s interpretation of USPTO regulations when the interpretation is plainly erroneous, the Federal Circuit found that BPAI erred in finding that the provisional application itself was new evidence. Specifically, the BPAI’s requirement that the specification be submitted under 202(a) must also be resubmitted under 202(d) is inconsistent with the rule. In relevant part, 37 C.F.R. § 41.202 states as follows:
(a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
. . .
(5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
. . .
(d) Requirement to show priority under 35 U.S.C. 102 (g).
. . .
(2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. . . .
According to the Federal Circuit, the BPAI’s interpretation of Rule 202 would mean that evidence already existing an applicant’s application (i.e., the specification) would be considered “new evidence” if not admitted initially for a showing of priority. The Federal Circuit interpreted 202(d) to mean that new evidence is for new evidence generally, and to interpret 202(d) to be held separate from the other specific subsidiary requirements would create an inconsistent interpretation of the regulation. Because the evidence in question was already before the Board pursuant to 202(a), the provisional application cannot be considered new evidence under 202(d).
However, the Federal Circuit found that even with the provisional application in evidence, the BPAI was correct in denying the interference. Specifically, the Federal Circuit found that testimony affirming the device’s existence without affirmation of its successful operation does not sufficiently corroborate Garner’s claim of actual reduction to practice. Sufficiency of corroboration is determined by using a “rule of reason” analysis, under which all pertinent evidence is examined when determining the credibility of an inventor’s testimony. See Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). The Federal Circuit stated that it is necessary for corroborating evidence to show that the device worked for its intended purpose. Hahn v. Wong, 892 F.2d 1028, 1032 (Fed. Cir. 1989)(stating that a witnesses’ reading of a lab book did not corroborate a reduction to practice… because they only established the existence of those pages on a certain date and “did not independently corroborate the statements made on those pages”). As such, while the BPAI’s interpretation of 37 CFR 41.202 was in error, the BPAI’s holding regarding the insufficiency of showing is supported by substantial evidence and their failure to consider the specifications amounts to harmless error.
Significance to Patent Applicants
While seemingly limited to interference practice, the issue of what evidence is new can arise in a multitude of other situations during ex parte prosecution. For instance, applicants are generally not allowed to present new evidence after a Final Office Action or during appeal. 37 CFR 1.116(e), 37 CFR 41.33(d). As such, In re Garner confirms that applicants can rely on independent provisions, such as the need or option to provide verified copies of foreign priority documents to perfect priority claims under 37 CFR 1.55(a)(4) or to file terminal disclaimers under 37 CFR 1.321(c), to have such material submitted without being considered new evidence.