Burden of proof when reference claims priority to a provisional

Takeaway: When an Examiner applies a § 102(e) reference as of its priority date, the precedential decision Ex parte Yamaguchi allocates the burden of proof for whether the priority document provides proper support under § 112. Specifically, Yamaguchi holds that "once the Examiner finds a factual correspondence between a U.S. patent or published application and its underlying provisional application, the burden shifts to Appellant to show why this finding is erroneous."

While the majority of the decisions which apply Yamaguchi enforce this "factual correspondence" requirement, a few rely on Yamaguchi to hold that there is no such requirement if the provisional is publicly available (e.g., Public PAIR).

More Details:

It's not clear exactly how much explanation must be included in the "factual correspondence." The Board has found the prima facie case met when the Examiner referred to a specific section of the provisional, then explained how this provisional section "describes similar if not exact subject matter" disclosed in the relied-upon § 102(e) reference. (Ex parte Olsen.) In another case, the Board described the Examiner's explanation of the correlation between publication and provisional as "in-depth" (Ex parte Parmelee.) However, in another case the Board characterized the Examiner’s explanation as "terse," but still found the prima facie case met because "the Examiner nonetheless found that both documents show the same subject matter." (Ex Parte Chawla.)

When the Applicant in Ex parte Chawla argued that the provisional wasn't identical to the § 102(e) reference, the Board explained that Yamaguchi did not require "identity of terms or figures."

In Ex parte Olsen, the Board explained that the Examiner's prima facie showing was unrebutted because the Applicant did not specifically address which of the relied-upon portions were not properly supported by the provisional.(Emphasis added.) Many Applicant attempts to rebut the Examiner's prima facie are criticized by the Board as "merely conclusory." For example, the Board in Ex parte Chawla criticized Applicant's statement that the identified portions of the provisional "make no mention whatsoever" of particular claim elements. As another example, the Board in Ex parte Billings explained that a statement "that is totally devoid of explanation or analysis hardly persuades us of error in the Examiner’s factual findings pertaining to Rawatand its prior non-provisional application."

While the cases above are a straightforward application of Yamaguchi, in two other cases the Board did not enforce the Yamaguchi requirement of "factual correspondence" between a § 102(e) reference and its provisional. 

In Ex parte Zheng, the Final Office Action did not refer to any particular portion of the provisional. In the Appeal Brief, the Applicant maintained that the reference was not prior art because the Examiner had not met his burden of demonstrating support in the provisonal.

Ignoring the Yamaguchi requirement, the Board summarily found that the Examiner had established a prima facie case, and that the Applicant had not rebutted this presumption because the Appeal Brief failed to identify which claim limitations were not supported the provisional. Finally, the Board noted that the same paragraph of the § 102(e) reference that was relied on by the Examiner was also present in the provisional  – thus making an implicit finding that the provisional did support the reference. What the opinion failed to note was the provisional was 53 pages long. Perhaps searching for a matching paragraph in a 53 page document is not too burdensome for the Applicant  – but what if the provisional was 500 pages long?

The Board also seemed to ignore the Yamaguchi requirement in Ex parte Hartigan. The Board criticized the Applicant for not obtaining the provisional through Public PAIR and determining whether the subject matter relied upon in the § 102(e) reference is supported by the provisional:

[T]he Appellant [does not] explain why the Appellant could not have performed this simple task during all this the time since the Appellant was first made aware of Aquila. Cf. Ex parte Yamaguchi, 88 USPQ2d 1606, 1613 (BPAI 2008) (precedential) (The Examiner had noted that the provisional application was readily available in the PAIR system.) Accordingly, we see no good reason to shift the burden now back to the Examiner to provide the argued-for showing.

My two cents: Don't bother appealing if the Examiner has pointed to particular portions of the provisional and you haven't yet reviewed those portions to determine whether the Examiner is right. It's a harder call if the Examiner has not met his burden by explaining which portions of the provisional correspond to the relied-upon portions of the § 102(e) reference.  You could appeal without saying more, and hope the Board applies Yamaguchi strictly.

I think the cases which ignore the factual correspondence requirement in Yamaguchi are wrongly decided, because I view the burden shifting requirement in Yamaguchi as clearly flowing from the Examiner's finding of a correspondence between reference and provisional, and unrelated to the dicta about public availability. (See Ex parte Yamaguchi, p. 18.) So if I lost at the Board because this "factual correspondence" requirement was ignored, I'd be inclined to file a Request a Rehearing with the Board. I'll be keeping an eye out for BPAI rehearings to see if anyone else does so.