Changes in the PTAB: From BRI to Ordinary and Customary Meaning

By Carla Vercellone In May of this year, the U.S. Patent and Trademark Office (‘USPTO’) issued a Notice of Proposed Rulemaking. Therein, it solicited and collected comments on the potential switch from the Broadest Reasonable Interpretation (‘BRI’) standard to the Ordinary and Customary meaning of a claim in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Circ. 2005) on claim construction for AIA Trial Proceedings. Due to the public’s favoring of this change, the issue was submitted to the Office of Management & Budget (‘OMB’) for final regulatory approval. Finally, the Final Rule Package was published on October 10th, 2018; it will affect inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM) proceedings before the PTAB filed on or after the effective date of this new rule, November 13th, 2018. There are three parts within a claim that patent owners need to keep in mind as they write it: it must be written

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Federal Circuit Defines When A Prima Facie Case For Anticipation is Met

In In re. Jung, Civ. Case No. 2010-1019 (Fed. Cir. March 28, 2011), Edward K.Y. Jung and Lowell L. Wood, Jr. (collectively, “Jung”) filed U.S. Patent Application No. 10/770,072 (“’072 application”) on January 20, 2004.   On September 14, 2005, the Examiner rejected all claims of the ‘072 application as anticipated by Kalnitsky (U.S. Patent No. 6,380,571).  Among other features, the Examiner indicated that Kalnitsky disclosed “a first well-charge-well [sic] controller (340) operably coupled with said first charge pump (see Col. 5, lines 37-39 and Col. 6, lines 38-44, 64-66)” which corresponded to the recited first well-charge-level controller.  Jung responded by providing a block quote from Kalnitsky, and arguing that the “‘well-charge-level controller’ recitations of [amended] Claim 1 are different from the ‘controller 340’ recitations of [Kalnitsky], and thus controller 340 of [Kalnitsky] does not match the ‘well-charge-level controller’ of herein-amended Independent Claim 1.”  No further explanation was provided. After the Examiner again rejected the claims, Jung appealed to the Board

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Federal Circuit Reverses BPAI Anticipation and Obviousness Rejection for Insubstantial Evidence

Also Finds Time to Appeal Begins From the Mailing Date as Opposed to Date Printed On Opinion In In re McNeil-PPC, Inc., 91 USPQ2d 1576 (Fed. Cir. 2009), McNeil owns U.S. Patent 6,310,269, which claims a tampon for feminine hygiene with a solid fiber core, where the core is denser than the radially projecting “ribs” and the ribs are narrower at their base than at their distal end.  McNeil requested that the PTO re-examine its patent on the basis of unexamined Japanese application No. 55-168330 by Tetsu Sasaki (hereinafter “Sasaki”).  Sasaki discloses the process of making a tampon blank via stitching layers of material and then molding the blank into a finished tampon.  The Examiner rejected claims 1 and 3 as anticipated by Sasaki and claim 4 as obvious over Sasaki.  McNeil appealed to the Board of Patent Appeals and Interferences (BPAI), arguing that Sasaki failed to disclose key elements of his claim (the relative densities and coarseness of the

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Federal Circuit Limits BPAI’s Ability To Group Claims for a Common Ground of Rejection

In Hyatt v. Dudas, 551 F3d 1307; 89 USPQ2d 1465 (Fed. Cir. 2008), the Federal Circuit affirms the district court’s vacating of the Board of Patent Appeals and Interferences’ (BPAI) rejection of all claims in twelve of Gilbert P. Hyatt’s patent applications.  In particular, the Federal Circuit held that a “ground of rejection,” as stipulated in 37 C.F.R. §1.192(c)(7), includes both the statutory section under which a claim is rejected, and the reason why the claim does not meet that statutory requirement. Between April and June of 1995, Hyatt filed the twelve patent applications as part of a series of continuation applications.  By the time of appeal, the twelve applications included approximately 2,400 claims.  The PTO examiner rejected all of the claims on various different grounds, including obviousness and lack of enablement.  However, the most common ground for rejection was that the claims lacked written description support under 35 U.S.C. §112, first paragraph.  Hyatt appealed the examiner’s rejections to the

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BPAI Creates New Test for 35 U.S.C. §112

Board Finds Indefiniteness exists where Claims are Subject to Multiple Interpretations and Claims Reciting Purely Functional Relationships are Invalid for a Lack of Enablement In Ex parte Kenichi Miyazaki, 89 USPQ2d 1207 (BPAI 2008), the appellant, Kenichi Miyazaki (Miyazaki), sought the Board’s review under 35 U.S.C. §134 of the rejection of pending claims 1-6, 13, 15-18, 26 and 31 for the Application No. 09/386,000.  The claimed invention is directed to a large printer using a paper roll.  The Examiner rejected the claims 1-6, 13 and 16-18 under 35 U.S.C. §112, second paragraph, as being indefinite with regard to the recited features of a height of the paper feeding unit and a sheet feeding area with reference to a user’s height.    On appeal, the first issue related to whether the Appellant has shown that the Examiner erred in determining that claims 1-6, 13 and 16-18 are indefinite under 35 U.S.C. § 112, second paragraph, when reciting the height features when

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Federal Circuit Finds That Subsequent Applications Must be Filed as a Divisional Applications For 35 U.S.C. §121 Exclusion

In Pfizer, Inc. v. Teva Pharms. USA, Inc., No. 2007-1271 (Fed. Cir. March 7, 2008), Pfizer filed an application for a broad range of non-steroidal anti-inflammatory drugs (NSAIDs) that could selectively inhibit the COX-2 enzyme.  Traditional NSAIDs, such as aspirin, ibuprofen, and naproxen, inhibit the cyclooxygenase (COX) enzyme in the body.  The COX enzyme produces molecules associated with pain and inflammation (COX-2) as well as molecules associated with the gastrointestinal tract (COX-1).  Since the traditional NSAIDs inhibited both enzymes, these drugs tended to have gastrointestinal side effects ranging from minor stomach aches to serious ulcers.  The application contained claims directed to the compounds, compositions using the compounds, and methods of using the compounds. The patent examiner issued a restriction requirement, identifying the compound claims, the composition claims, and the method claims as directed to patentably distinct subject matter.  The patent examiner also required Pfizer to elect a species.  Pfizer elected to prosecute the generic compound claims as well as the

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Federal Circuit Finds Priority Documents Are Not New Evidence For Purposes of Interference

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.

Federal Circuit Finds Improper Incorporation By Reference Prevented Claiming Priority To Parent Appplication

In Zenon Environmental, Inc. v. United States Filter Corporation, Civ Case No. 2006-1266, -1267 (Fed. Cir. November 7, 2007), Zenon is the owner of U.S. Patent No. 6,620,319 (hereinafter referred to as the ‘319 patent).  The ‘319 patent relates to water treatment and filtration systems, and in particular, to the use of vertical skeins having fibers that filter organic material and which are cleaned using air bubbles of a predetermined size which are provided by a gas distribution system.  The ‘319 patent was designated as a continuation of multiple applications in a chain, including U.S. Patent No. 5,910,250 (hereinafter referred to as the ‘250 patent).  The ‘250 patent was designated as a continuation in part of U.S. Patent No. 5,639,373 (hereinafter referred to as the ‘373 patent).  The ‘373 patent described vertical skeins and a gas distribution system, and the ‘319 patent claims the same gas distribution system described in the ‘373 patent. The ‘250 patent incorporated the subject matter

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Federal Circuit Rejects Patent Office’s Interpretation of Flexible To Include Rigid to be Unreasonable and Not Creditable

In In re Buszard, 84 USPQ2d 1749 (Fed. Cir. 2007), applicants’ invention is directed to a flexible polyurethane foam used in a flame retardant composition.  The Examiner rejected the claims as anticipated in view of Eling et al., which describes a rigid foam that is made flexible through crushing.  The Board of Patent Appeals and Interference (BPAI) affirmed the Examiner, and the applicants appealed the BPAI decision on the grounds that the Examiner’s interpretation of the term “flexible” cannot encompass “rigid.”  In reviewing the BPAI decision, the Federal Circuit held that, under the Administrative Procedure Act, 5 U.S.C. ‘706, all decisions from the BPAI are reviewed to determine if the Board’s decision is supported by substantial evidence. Dickinson v. Zurko, 527U.S. 150, 165 (1999).  Moreover, for purposes of anticipation, the record must show that all limitations in the claim are met by a single reference where the claims are given their broadest reasonable interpretation. In reviewing the record and the

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Federal Circuit Denies Foreign Priority Benefit Due to Difference in Applicant

In Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc. and Eric Martin, 83 USPQ2d 1669 (Fed. Cir. 2007),Boston Scientific Scimed (“Scimed”) appeals a district court grant of summary judgment denying Scimed the priority benefit of an earlier-filed European patent application.  In particular, Scimed points to the European application for the subject matter at issue in an interference proceeding between Scimed, Medtronic Vascular, Inc. (“Medtronic”), and Eric C. Martin.  The issue on appeal is whether an applicant for U.S. patent is permitted “to benefit from the priority of a foreign application previously filed by an entity that was not acting on behalf of the U.S. applicant at the time of filing” of the foreign application.  The Federal Circuit holds that the applicant is not permitted to benefit from the priority of the foreign application where there is a difference in applicants. Scimed, Medtronic, and Martin are each assignees of differentU.S.patent applications covering the same invention (“An apparatus for reinforcing a bifurcated

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