View source for Talk:Chester v. Miller (full text)


== Maura ==

The EIC decided that the '280 patent, a parent of Chester's '122 CIP application, was section 102(b) prior art with respect to the CIP claims 1-16, 29, and 30. The EIC so decided because he found the '280 patent was a "printed publication" in existence more than one year before the '122 application's filing date. He also concluded that the '280 patent did not support the subject matter claimed inthe '122 application. See 35 U.S.C. Secs. 102(b) & 120 (1988); In re Gosteli, 872 F.2d 1008, 1010-11, 10 USPQ2d 1614, 1616 (Fed.Cir.1989). The EIC thus rejected claims 1-16, 29, and 30 as unpatentable under section 102(b) over the '280 reference.

In the instant case, the EIC simply found that the '280 reference (parent) did not support the '122 application claims because as to them it failed to meet the written description requirement.3 12

One of our predecessor courts, the Court of Customs and Patent Appeals (CCPA), however, made clear that differences exist between the requirements for claim-anticipating disclosures and for claim- supporting disclosures. In re Lukach, 442 F.2d at 969-70, 169 USPQ at 796-97. The CCPA noted in Lukach that although a patent might contain a disclosure satisfying the written description requirement with respect to the claims in that patent, it could still be section 102(b) prior art as to broader claims of a subsequent application although not containing a disclosure satisfying the section 112 description requirement with respect to the anticipated broader claims. See id. at 969-70, 169 USPQ at 797. This apparent anomaly is most likely to occur when the prior art reference discloses a species of a genus sought to be claimed. See, e.g., id. That is exactly what happened in the instant case, and accordingly we see no impermissible anomaly or logical inconsistency in the EIC's rejection. 13

Chester thus appears to make a procedural argument citing 35 U.S.C. Sec. 132 (1988) which he noted requires rejections to include a statement of the "reasons."5 We are unpersuaded that section 132 supports the proposition suggested by Chester--that the PTO is required to state specifically that a prior art reference describes and enables claims rejected as anticipated. That section does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant "at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence."

We do agree with Chester that the interference rules permit further consideration of the patentability of Miller's claims after denial of Chester's motion for judgment, but only if proper procedures are followed. Here, Chester failed to initiate the proper procedures. Accordingly, we also hold the Board's refusal to consider his untimely motion for reconsideration was correct.

==Courtney==


Anticipation is a question of fact we review under the clearly erroneous standard. In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed.Cir.1986). The EIC decided that the '280 patent, a parent of Chester's '122 CIP application, was section 102(b) prior art with respect to the CIP claims 1-16, 29, and 30. The EIC so decided because he found the '280 patent was a "printed publication" in existence more than one year before the '122 application's filing date. He also concluded that the '280 patent did not support the subject matter claimed in the '122 application. See 35 U.S.C. Secs. 102(b) & 120 (1988); In re Gosteli, 872 F.2d 1008, 1010-11, 10 USPQ2d 1614, 1616 (Fed.Cir.1989). The EIC thus rejected claims 1-16, 29, and 30 as unpatentable under section 102(b) over the '280 reference. As noted, pursuant to 37 C.F.R. Sec. 1.640(d)(1) (1989), the EIC issued an order to show cause why judgment should not be entered against Chester. We hold that Chester failed to overcome the prima facie case of anticipation, and thus the Board properly found Chester's claims 1-16, 29, and 30 unpatentable to Chester. 11

Although in some circumstances we could agree with Chester's implicit argument that a prima facie case of anticipation could not be established if an EIC concluded both that the subject matter claimed in a CIP application is not enabled by a parent application2 and that the claims are anticipated by the parent which has issued as a patent, we cannot agree that this is always so. For example, a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus. Cf. In re Lukach, 58 CCPA 1233, 442 F.2d 967, 969-70, 169 USPQ 795, 796-97 (1971). Nonetheless, we need not decide whether those are the circumstances here. In the instant case, the EIC simply found that the '280 reference (parent) did not support the '122 application claims because as to them it failed to meet the written description requirement.3 12

We conclude that a prima facie case of anticipation was established justifying the EIC's decision to issue a show cause order. Thus, the burden was properly placed on Chester. Cf. In re King, 801 F.2d at 1327, 231 USPQ at 138. Chester failed to sustain his burden, however. No argument was offered that the application claims do not read on the '280 patent claims. Nor did Chester assert that the '280 patent is not prior art by attempting to show that the '280 specification met the written description requirement with respect to the '122 application claims. Before us, Chester merely attacked the holding of Lukach and presented the straw man that the Board found insufficient enablement. Accordingly, we are unpersuaded that the Board's finding of anticipation of claims 1-16, 29, and 30 was clearly erroneous.

A claim is anticipated under section 102 if a prior art reference discloses every element of the claim. King, 801 F.2d at 1326, 231 USPQ at 138. The EIC rejected Chester's claims 17-28 under section 102 over the '403 patent.4 Chester responded that the EIC had not specified that the '403 reference provided written description or enablement of the subject matter of the rejected claims.

== Kevin ==

BACKGROUND 2
This single count interference involves Miller's '465 patent, which issued July 20, 1982, and Chester's '122 application, filed July 15, 1983. Chester's application was filed as a continuation-in-part (CIP) application of two copending (commonly assigned) applications, and the lineage of those applications is noted in Figure 1, below. 3The subject matter of this interference relates to a process for catalytically cracking a feedstock1 to yield products such as gasoline by contacting the feedstock with a catalyst that has two components: (1) a large pore crystalline aluminosilicate zeolite and (2) a shape selective crystalline aluminosilicate zeolite. "Shape selective" is used to mean that the second zeolite component has smaller pores than the first component; the second zeolite's smaller pores admit small hydrocarbon molecules but exclude certain larger hydrocarbon molecules. 5
The interference involved numerous preliminary motions by both parties. In particular, the Examiner-in-Chief (EIC) granted one of Miller's motions for judgment on the ground that Chester's claims 1-16, 29, and 30 are unpatentable under 35 U.S.C. Sec. 102(b) (1988) over U.S. Patent No. 4,309,280 ('280). The '280 patent was part of Chester's '122 CIP application's lineage (see Figure 1) and Chester had relied on the benefit of the earlier filing date of the '280 patent under 35 U.S.C. Sec. 120 (1988). Acting pursuant to 37 C.F.R. Sec. 641 (1989), the EIC also rejected Chester's claims 17-28 (Chester's remaining claims corresponding to the count) as unpatentable under 35 U.S.C. Secs. 102 or 103 (1988) over U.S. Patent No. 3,758,403 ('403), not shown in Figure 1. 6
The EIC further granted Miller's alternative motion for judgment against Chester on all of his application claims on the ground that Chester was estopped to contend that the claims were patentable to Chester because Chester had disclaimed subject matter during the prosecution of the parent applications. Based on these decisions and pursuant to 37 C.F.R. Sec. 1.640(d)(1) (1989), Chester was ordered to show cause why judgment should not be entered against him. 7
In response, Chester filed a paper arguing that judgment should not be entered against him (Show Cause Paper). But he did not request a final hearing or seek a testimony period. Chester's Show Cause Paper did address the motions granted and also requested reconsideration of the EIC's denial of one of Chester's motions for judgment on the ground that Miller's claims were unpatentable to Miller. We conclude that a prima facie case of anticipation was established justifying the EIC's decision to issue a show cause order. Thus, the burden was properly placed on Chester. Cf. In re King, 801 F.2d at 1327, 231 USPQ at 138. Chester failed to sustain his burden, however. No argument was offered that the application claims do not read on the '280 patent claims. Nor did Chester assert that the '280 patent is not prior art by attempting to show that the '280 specification met the written description requirement with respect to the '122 application claims. Before us, Chester merely attacked the holding of Lukach and presented the straw man that the Board found insufficient enablement. Accordingly, we are unpersuaded that the Board's finding of anticipation of claims 1-16, 29, and 30 was clearly erroneous.
II. Chester's Claims 17-28 14
A claim is anticipated under section 102 if a prior art reference discloses every element of the claim. King, 801 F.2d at 1326, 231 USPQ at 138. The EIC rejected Chester's claims 17-28 under section 102 over the '403 patent.4 Chester responded that the EIC had not specified that the '403 reference provided written description or enablement of the subject matter of the rejected claims.Chester thus appears to make a procedural argument citing 35 U.S.C. Sec. 132 (1988) which he noted requires rejections to include a statement of the "reasons."5 We are unpersuaded that section 132 supports the proposition suggested by Chester--that the PTO is required to state specifically that a prior art reference describes and enables claims rejected as anticipated. That section does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant "at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence." In re Hughes, 52 CCPA 1355, 345 F.2d 184, 185, 145 USPQ 467, 468 (1965). Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. See, e.g., In re Wilke, 50 CCPA 964, 314 F.2d 558, 562, 136 USPQ 435, 439 (1963). In the instant case, the reasons supporting the prima facie case of anticipation did put Chester on notice. The EIC specified exactly which claims read on exactly what prior art. The burden thus properly was shifted to Chester to rebut the prima facie case. Cf. King, 801 F.2d at 1327, 231 USPQ at 138.Chester did not produce any evidence that the '403 reference did not satisfy the written description and enablement requirements with respect to the anticipating subject matter so as to preclude the Board from finding that anticipation had been established by the preponderance of the evidenceBecause no convincing argument was presented to the Board that the limitations highlighted by Chester were not disclosed by the '403 reference, we conclude that the Board's finding that claim 17 was anticipated was not clearly erroneous. Because Chester failed to make any arguments as to how the Board clearly erred in rejecting claims 18-28 as anticipated, we affirm the Board's decision with respect to those claims as well.7