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A Harbison_Patent Law_Fall 2007_Writing Assignment_In re Garner Cases of Interest >  IP >  Patent >  Written Description

In Re Garner

Case Name and Citation: In re Garner, 2007 W.L. 4246146 (C.A. Fed. Dec. 5, 2007)

Facts: The appellant, Garner, filed a patent application on November 29, 2001 claiming priority to a provisional application filed on May 29, 1998 via two continuing applications (Application 09/008,431). The specification of appellant’s application described “an apparatus for catalyzing a reaction on a substrate comprising; a light source; a computer-controlled micromirror positioned to redirect light from the life source toward the substrate; and a reaction chamber, wherein light redirected by the mircromirror catalyzes a chemical reaction proximate the substrate in the reaction.”

Procedural History: Upon review by the patent examiner, the appellant’s application was rejected because it was determined to be anticipated by claims contained in Patent 6,480,324 (Quate Patent). The Quate patent issued from an application filed on June 4, 2001, that claimed priority to a provisional application filed on May 29, 1998. In an attempt to provoke an interference pursuant to 37 CFR § 14.202(d), the appellant amended his application by copying the claims contained in the Quate patent and adding the claims to his application. Pursuant to 202(d), the appellant bore the burden of establishing priority of the invention. Appellant attempted to satisfy this burden by submitting an affidavit on November 28, 2001 asserting an earlier reduction to practice date than Quate’s filing date, photographs of the appellant’s invention completed prior to the Quate filing date, and notes from a lab notebook that demonstrate that appellant’s invention functioned prior the filing date. To corroborate the claim of an earlier filing date, the appellant submitted a declaration of John Fondon. The examiner found the appellant’s evidence insufficient to provoke an interference.

In response to this action, the appellant then retitled and reexecuted the 2001 Declaration without making any real substantive changes to the document. Upon review by the United States Patent and Trademark Office, Board of Appeals and Interferences, the Board affirmed the patent examiner’s conclusion that the appellant’s evidence was insufficient to establish priority, but declared an interference and issued an Order to Show Cause why judgment should not be entered against the appellant. In response to this Order, the appellant relied upon a 37 C.F.R. § 1.131 declaration (filed on Sept. 2, 2003) to overcome prior art, the specification of the provisional application, and the specification of the utility application. The Board of Appeals held that all three of these items constituted new evidence, not permitted under 202(d) and therefore, the appellant had failed to show good cause to permit the introduction of the new evidence. The Board issued a ruling against the appellant, Garner.

Issue: The first issue upon review by the United States Court of Appeals for the Federal Circuit is if the Board of Appeals correctly interpreted the 202(d) rule in holding that appellant’s evidence was correctly categorized as new evidence, inadmissible to establish priority and that the appellant had failed to show good cause for the submission of the new evidence. The second issue the Court must address is whether the appellant sufficiently established his claim of reduction to practice to be awarded priority.

Holding: Judge Moore, writing for the court held that (1) Board’s determination that the evidence relied upon in the appellant’s Order to Show Cause was incorrectly categorized as new evidence and was inconsistent with 37 C.F.R. § 41.202 and (2) that even with the admission of the specification, the appellant failed to sufficiently corroborate the claim of reduction to practice to be awarded priority.

The Court’s rejection of the PTO’s argument that different interpretations of what is considerable new evidence under §§ 202(a) & 202(d) did not create internal consistencies within the rule. 202(a) requires the production of a claim chart showing the written description for each claim including in the applicant’s specification in order to provoke an interference. Under 202(a) the specification is considered to determine the meaning of the claim. The Court held that because the purpose of both of these sections was to provoke an interference there should not be distinction between the evidentiary submissions of the applicant between 202(a) and 202(d).

The court then went on to consider if the consideration of the appellant’s specifications from his provisional and utility application established a prima facie showing of priority. The Court stated that in order for the appellant to satisfy this burden it must be proven and corroborated by independent evidence that (1) the applicant constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) the applicant determined that the invention would work for its intended purpose. The Court concluded that even with consideration of the specification, the appellant had failed to sufficiently corroborate his claim of reduction to practice. The Court pointed out that the Fondon declaration failed to meet the necessary requirements for corroboration by not stating the Fondon had knowledge that the appellant’s invention operated for it intended purpose. Therefore, the Court affirmed the Board’s holding that the appellant had failed to adequately establish his claim of priority.

Importance: The importance of this case lies in the Court’s resolution of the evidentiary standards under Rule 202. The Court is clear in its opinion that there is no reason for different evidentiary standards between the sections of the rule. The court affirms what is permissible evidence when attempting to provoke an interference under the rule. This shores up for many what is useable to escape a prior art rejection during lengthy and expensive patent prosecution.

Critical Analysis: I agree with the court’s reasoning. There should be no reason for different evidentiary standards provoking an interference on the basis of priority. The court’s opinion also helps to answer a single question about the many that arise during patent prosecution. I believe that the court’s direct answer in the case will help with the efficiency of other patent claims by preventing other applicants to raise the same or similar issue.

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