BPAI says foreign application can be used in swear behind to show constructive reduction to practice – under some conditions

Takeaway: On appeal, the Applicant argued that a foreign filing could be used to show constructive to practice in a swear behind declaration. The BPAI said that the foreign filing was constructive reduction to practice only if the US filing occurred less than a year after the foreign filing, citing In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983). If the US filing took place more than one year after the foreign filing, § 119(a) does not allow the foreign application to be used as constructive reduction to practice.

Details:

Ex parte Saito
Appeal 200805777; Appl. No. 10/800,386; Tech. Center 2800
Decided  December 28, 2008

The technology in the application on appeal related to color bar codes. In the first Office Action, the Examiner rejected the independent claims as being anticipated by Ackley under § 102(e). The Applicant responded by attempting to swear behind Ackley, by showing conception before Ackley's filing date coupled with diligence from conception to the filing of Applicant's provisional (to which priority was claimed).

Specifically, the Applicant submitted evidence of conception in the form of Applicant's corresponding Japanese patent application, and a certified English translation thereof. As for diligence, the inventor's declaration included statements about preparation of the provisional application, spanning the time frame starting immediately before Ackely's filing date up to the filing of the provisional.

The Applicant explained the evidence as follows:

As stated in the Declaration of Takahlro Saito, during the period of time from just before October 18, 1999 to December 15, 1999, Mr. Saito has been working with Mr. Tetsuo Wada of Ehara Patent Office to modify and finalize the specification for the base U.S. provisional application No. 601170,815. Mr. Saito exchanged opinions with Mr. Wada and modified the specification numerous times during that period of time, while both Mr. Saito and Mr. Wada fulfilled other work related duties. Exhibit C is a draft specification dated December 10, 1999, which is a modified version of the disclosure shown in Exhibit A and was finished five days before filing the provisional application No. 601170,815. As shown and evidenced above, Mr. Saito and his patent attorney(s) had worked on the present invention with due diligence from just before October 18, 1999 (the 102(e) date of Ackley) to December 15, 1999 (the date of constructive reduction to practice). 

The Examiner maintained the rejection in a Final Office Action, explaining that the evidence was insufficient to show diligence. Specifically, the Examiner indicated that:

The evidence submitted is insufficient to establish diligence from a date prior to the date of reduction to practice of the Ackley reference to either a constructive reduction to practice or an actual reduction to practice since the applicant's statements are vague as to diligence. For example, applicant states on page 1, paragraph 4 of the declaration filed 4 April 2005, "As far as I can recall" and "We exchanged opinions.. ." which are not concrete declarations of an established diligence since applicant is not sure when he says "As far as I can recall" and does not pinpoint specific conversations during a 2 year time period when it is stated that "We exchanged opinions ... while both fulfill other work-related duties".

The Applicant filed an After Final Response which included another swear-behind declaration. Like the first one, the second swear-behind declaration referenced the corresponding Japanese patent application. However, the second swear-behind did not include statements about, or evidence of, diligence. Instead, the Response asserted that the Japanese patent application was evidence of constructive reduction to practice before the critical date.

In the Advisory Action, the Examiner indicated that the second declaration was still ineffective to remove the Ackely reference. The Examiner took the position that filing of the Japanese application was only evidence of conception, and that diligence must be shown from the time of conception until the time of the US filing (almost a two year period). The Applicant then filed a Notice of Appeal.

In the Appeal Brief, the Applicant argued that Arkley was not prior art because the inventor "constructively reduced the claimed invention of the present application to practice by filing in Japan on November 28, 1997 before the § 102(e) date of Ackley." The Applicant also noted that although the Japanese application did publish, this was not a § 102(b) bar since the US provisional was filed less than one year before the publication.

The Examiner's Answer maintained that Arkley was prior art. The Examiner interpreted the Applicant's reference to the Japanese filing as reliance on a foreign priority date. The Examiner then cited Stevens v. Tamai (Fed. Cir 2004) for the rule that Section 119(a) prohibits reliance on a foreign filing for priority when the foreign filing is more than a year before the US filing, as was the case here. The Examiner further explained:

Appellant apparently mis-interpreted the statute to allow asserting priority benefit of the filing date of a foreign application if a later filed provisional was filed within one year of the filing date of the foreign application. This is not a proper interpretation of section 119(a) since 119(a) is available for an application for a patent and not for a provisional application which is not an application for patent.

According to the Examiner, the § 119(a) prohibition against relying on the foreign filing more than a year earlier had the following effect:

[T]he affidavit may at best be sufficient to show conception as of the applicant's foreign filing date of November 28, 1997 but is not adequate to establish constructive reduction to practice. As such, in order to disqualify Ackley as a 102(e) reference, diligence must be shown from the date of conception to the filing date of the Ackley reference. ... Due to a lack of claimed diligence, the arguments are not persuasive.

The Board decision first focused on "reduction to practice" in the first prong of § 1.131(b):

Thus, under the first prong of 37 C.F.R. § 1.131(b), Appellant has to establish reduction to practice prior to the effective date of the 102 (e) reference. Appellant’s declaration and arguments assume that to show reduction to practice as encompassed by “filing of the application” recited in 37 C.F.R. § 1.131(b) includes filing an application for the same invention in a foreign country.

The Board found that the Applicant had not established reduction to practice. The Japanese filing did not qualify as constructive reduction to practice per se because the phrase "the application" in § 1.131(b) refers to a US application, not to a foreign application. The case law nonetheless allows constructive reduction to practice through a foreign filing – but only if that foreign filing met the requirements of § 119(a). (See In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983)). But here the Applicant waited more than a year after the Japanese filing to file the US provisional application, and thus did not comply with § 119(a).

Having found no reduction to practice under the first prong of § 1.131(b), the Board turned to the second prong, which requires conception plus diligence. The Board acknowledged that the Japanese filing might be enough to show conception. However, the Board summarily stated that the Applicant had not provided "sufficient evidence" of due diligence during the required period (one day before the reference filing date to the filing of the Applicant's provisional). Therefore, the reference was not disqualified as prior art, and the prior art rejections were affirmed.

My two cents: The Applicant made a mistake in not making an argument on diligence using the originally submitted declaration. The Examiner said the diligence period was 2 years but the correct period was only 2 months. It's true that conception before the reference date must be shown. But the diligence period does not start at conception. The diligence period instead starts immediately before the reference date. (MPEP 715.07.) That is, unexplained gaps between conception and the reference date are allowed – just not unexpected gaps between the reference date and reduction to practice (actual or constructive).

Since the earlier "diligence" declaration was already in the record, the Applicant should have argued conception plus diligence as an alternative to the argument made (constructive reduction to practice).
Instead, the Applicant based the entire appeal on a statutory interpretation that was either creative, strained, or misguided.

The decision doesn't discuss the diligence evidence at all. So I can't tell if the Board didn't evaluate diligence (because no arguments were made on appeal) or evaluated it and found it lacking.

I wondered at first why the Board even brought up the point that a foreign filing can be used to show constructive reduction to practice, as long as the filing meets § 119(a). After all, if you meet § 119(a), you can go with a straight claim to foreign priority, in which case you don't need a swear behind. After reading the fine print in the decision, it appears to me that constructive reduction through a foreign filing could be useful if you forget to claim priority and it's too late to fix the priority claim through a petition.