Board finds no inconsistency with relying on Official Notice for a claimed feature while also asserting that this feature isn't supported by Applicant's sparse description

Takeaway: The Examiner denied the Applicant's priority claim to a provisional, for failure to adequately describe a claim limitation. According to the Examiner, some description was present, but not in the context claimed. The Examiner then used Official Notice for this same feature in an obviousness rejection. On appeal, the Applicant argued the "facial inconsistency" of these two positions: "asserting the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature." The Board was not persuaded by the inconsistency argument, and cited to Vas-Cath Inc. v. Mahurkar to explain that "a claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application." (Ex parte Timbadia, PTAB 2013.)

Details:
Ex parte Timbadia
Appeal 2010002877; Appl. No. 10/712,938; Tech. Center 3700
Decided: March 25, 2013

The application was directed to automated test-taking. During prosecution, the Applicant amended to add these limitations:

     delivering a changed state object at the same time that a triggering event occurs on the testing station;
     upon failure of the testing station, the [state objects] ... are used to recreate the examination on the testing station ... and
     wherein the user will not be penalized for the time that questions are not available.
(Emphasis added for limitations at issue.)

In response, the Examiner switched to a different secondary reference in the obviousness rejection (Ashley)of all independent claims. The Examiner relied on this secondary reference for the "at the same time" feature, and took Official Notice of the new "not penalized" feature. At the same time, the Examiner denied the priority claim because the newly added "at the same time" and "not penalized" features were allegedly not present in the provisional. However, Examiner did not reject any claims under written description or enablement.

In an After Final response, the Applicant argued that the Ashley reference was not prior art because the Applicant's provisional did provide an enabling disclosure for the newly claimed features. In support of this argument, the Applicant pointed to to specific passages in the provisional and explained their relevance. The Applicant also traversed the Official Notice as follows:

Applicants cannot fail to note that this portion of the claims so evidently and precisely enabled by the provisional application is also the same portion of the claims for which the Examiner has relied upon official notice. Per MPEP 2144.03, Applicants thus traverse such taking of official notice as improper as lacking sufficient documentary evidence. Citation of a post-dated alleged prior art reference by the Examiner is erroneous not only for the obviousness rejection presented, but also as grounds for taking official notice that the claimed feature is of such notorious character as capable of instant and unquestionable demonstration as to defy dispute. See In re Zurko, 258 F.3d at 1386.

The Applicant appealed. In the Brief, the Applicant specifically traversed the issue of the priority claim. The Applicant explained that the provisional application described using a test state to recover an exam after testing station failure, and this test state includes an elapsed test time that takes into consideration the amount of time that a test is unavailable to the user. Thus, Ashley was not prior art. In the obviousness section of the Brief, the Applicant also argued that Ashley did not teach the "at the same time" limitation. Notably, this section did not discuss the "not penalized" claim limitation or the Examiner's reliance of Official Notice for this feature.

In the Answer, the Examiner maintained the obviousness rejection of all independent claims. The Examiner discussed the denial of priority in the obviousness rejection. The Examiner acknowledged that the "not penalized" claim language was present in the provisional, but noted this was in the context of accounting for transmission latency rather than in the context of a recovery function (as claimed). In a Response to Arguments section, the Examiner noted there were "significant modifications" and "stark differences" between the provisional and the application on appeal. Also, the Applicant had failed to adequately traverse the Official Notice during prosecution, thus admitting that the "not penalized" feature was well-known.

The Applicant filed a Reply Brief which included a section titled "the Examiner's use of Official Notice was properly traversed, is improper and is Squarely Inconsistent with the Office's Contention that Subject Matter at Issue is Not Supported by Applicants'Own Provisional Application." The Applicant argued that the traversal was proper, as follows:

[T]he traversal highlighted the facial inconsistency in the examiner's logic of asserting that the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature.

On appeal, the Board made findings with regard to "Claims 1 and 13 – Written Description Support" since this issue was contested and impacted the obviousness rejection. The Board found that all features recited in claims 1 and 13 were adequately described in the provisional, so that Ashley was not prior art. With regard to the "not penalized feature," the Board found that the Examiner’s interpretation of what the provisional application describes was "unreasonably narrow." The Examiner incorrectly focused on the provisional's teachings about accounting for transmission latency, but a person of ordinary skill reading the document as a whole "would conclude that recreating the test based on the state of the test at the time of a testing station failure would require not penalizing the user for time lost due to this failure."

Since Ashely was not prior art for claims 1 and 13, the Board reversed the obviousness rejection of these claims. However, claim 20 used slightly different language to describe the "initial state object" feature, which the Board found was not adequately described in the provisional. The Board therefore considered the obviousness rejection of claim 20 on the merits, and affirmed.

With regard to the "at the same time" feature, the Board found no error in the Examiner's finding that Kershaw taught this feature. With regard to the "not penalized" feature, the Board found that the Applicant had not properly traversed the taking of Official Notice because it did not "explain why the noticed fact is not considered to be common knowledge or well-known in the art" (citing In re Boon, 439 F.2d 724, 728 (CCPA 1971)).

The Board also commented on the Applicant's inconsistency argument – that the Notice'd feature was completely missing in the reference yet textually supported by Applicant's provisional:

Appellants have not provided persuasive argument as to why the Examiner’s findings are inconsistent. A claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).

Finally, the Board noted that any alleged inconsistency was resolved by the Board's finding that the subject of the Official Notice ("not penalized" feature) was indeed properly supported in the provisional application.


My two cents: The Applicant's inconsistency argument has intuitive appeal, but is ultimately flawed. The argument goes like this: "Surely the Examiner's characterization of a feature as 'well-known' indicates that very little description is needed, in which case a sparse description of the same feature by the Applicant shouldn't result in a denial of the priority claim." However, this argument is flawed because it confuses enablement and written description.

A reference has only to enable. Since this can take into account the background knowledge of a POSITA, a sparse description may indeed be enough for enablement. On the other hand, the Applicant's spec has to comply with both the enablement and the written description requirement. And written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." (Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc)).

Unfortunately, when you have a sparse description of a particular embodiment that falls within the claim scope, then try to argue that a POSITA can fill in the rest, the case law on written description goes against you:

The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
Lockwood v. American Airlines, Inc., 107 F. 3d 1565 (Fed. Cir. 1997).

Or, put another way:

A description of one method . . . does not entitle the inventor . . . to claim any and all means for achieving that objective."
LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005).

Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

The Federal Circuit decision Medtronic Corevalve v Edwards Lifesciences deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.

BPAI finds Applicant did not properly claim priority to a PCT application

Takeaway: An Applicant argued on appeal that a reference was not prior art because the application on appeal "asserted" priority to a PCT application. The BPAI found that the priority claim was ineffective because it did not specify a relationship between the application on appeal and the PCT application. (Ex parte Gidwani, BPAI 2011.)

Details:

Ex parte Gidwani
Appeal 2010-005181
Application 10/272,812
Technology Center 1600
Decided June 28, 2011

The application involved claims to metformin, a drug used to treat diabetes. The Examiner rejected the independent claims as obvious over Matharu in view of Igari or Timmins.

During prosecution, the Applicant argued the merits of the primary Matharu reference.  In a footnote, the Applicant also argued that Matharu was not prior art: "MATHARAU was filed 27 June 2002. In contrast, the instant application asserts priority from a PCT application Serial No. PCT/IB2000/01404, filed on 2 October 2000. MATHARU thus does not qualify as prior art."

The Examiner responded in an Office Acton by indicating that "a review of the application does not reveal any evidence of national stage filing other than the first sentence of the spec. It is not claimed in the oath." The Office Action then reproduced portions of the MPEP referencing a petition for a delayed benefit claim under § 1.78.

The Applicant appealed the obviousness rejection, and once again argued both the merits of Matharu and its status as prior art. In the Appeal Brief, the Applicant argued that the specification contains a "specific reference to the prior application" as required by § 120 and "accordingly asserts an October 2000 effective filing date." The Appeal Brief reproduced the first paragraph of the specification:

CROSS-REFERENCE TO RELATED APPLICATIONS
Serial No. 09/857,077, filed April 2, 2002, for SUSTAINED RELEASE PHARMACEUTICAL COMPOSITIONS CONTAINING METFORMIN AND METHOD OF THEIR PRODUCTION, now pending, which is a national phase entry under 35 U.S.C. § 371 of PCT/IB00/01404 filed October 2, 2000, now pending.

The Applicant also addressed the Examiner's comment that national stage filing was not claimed in the oath:

The Examiner, however, ignores applicant's priority assertion, arguing that the Applicant must include its priority assertion not the Specification, but in the Inventors' Oath. Applicant respectfully disagrees because the Office's own procedural manual merely requires the priority assertion be made in "the application" - that is, in the oath, or in the specification, or in an application data sheet. See 35 U.S.C. § 120; MAN. PAT. EXAM. PROC. § 201.11. Applicant did precisely what the statute and the Office's own procedural manual requires. Matharu is thus not eligible as prior art.

In the Answer, the Examiner responded to the issue of Matharu's prior art status by pointing out that the statement in the specification did not identify "the relationship between the instant application and the application over which the priority has been claimed."

The BPAI found that the Applicant's specification did not identify a relationship between the application under appeal and the application mentioned in the Cross Reference section, as required by § 1.78. "Contrary to Appellants' contention, without a relationship, the Specification does not 'assert' an effective filing date for the invention claimed other than the filing date of the Application on appeal." The Board concluded that the claim to priority was not perfected, so that Matharu was prior art.

The Board then found that the Examiner had presented a prima facie case of obviousness, and so affirmed the rejection.

My two cents: Not really a lesson about appeal, but about claiming priority. It appears that this Applicant simply didn't understand the rules for claiming priority. Didn't do it right in the specification as originally flied. Didn't do it in the application transmittal as originally filed. Didn't file an ADS at filing. Didn't file a petition for a delayed benefit claim, which is how you fix this error if you don't catch it right after filing.

It appears that the Applicant realized the mistake after filing the appeal, since an ADS with a priority claim was filed while the case was awaiting a Board decision. Unfortunately, it was way too late for correction via an ADS. The Applicant should have filed a § 1.78 petition to perfect the priority claim, then filed an RCE to pull from Appeal and to tell the Examiner about the perfected claim. I'll bet the Examiner would have removed the Matharu reference.

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.

Fed. Cir. appeal on use of provisional date as priority date (In re Giacomini)

Last year, the BPAI issued the precedential opinion Ex parte Yamaguchi, which held that a reference is available as 102(e) prior art as of the filing date of its provisional application, as long as the provisional "supports" the subject matter used in the rejection.

I didn't even blink when I read this decision, since I see Examiners do this all the time and the MPEP specifically allows for this (see MPEP 2163.03). My impression of Yamaguchi was that the Applicant didn't understand the burden of proof: the Applicant argued that the provisional "didn't exactly track" the reference patent publication, and the Board considered this to be a conclusory statement which wasn't enough to rebut the Examiner's finding that the "provisional application 'clearly shows the same subject matter as applied from the [reference]'."

Now this issue – reaching back to the provisional filing date – is coming before the Federal Circuit in the case In re Giacomini (Fed. Cir. docket no. 2009-1400). I was surprised to learn this is the first time the Federal Circuit has considered the issue. True, the relevant language in § 102(e) is relatively recent: the 1999 "American Inventors Protection Act". But no one in the last 10 years had an infringement case or a BPAI case that hinged on a reference's provisional date that was important enough to appeal?

In re Giacomini is scheduled for oral argument in January 2010, and the briefs are available through PatentlyO (here).

Though I glanced at the briefs, I'm not interested enough in statutory construction to form an opinion on which side has the better argument. I am interested in patent prosecution, though, and found a few things in the file history that I'll comment on in a later post.

Follow up / Related Posts:

• I blogged about the eventual Federal Circuit decision In re Giacomini here; 
• I blogged about why the Applicant didn't even argue that the reference didn't deserve the provisional's filing date here.
• I blogged about Giacomini's indefiniteness issue at the BPAI here.