Talk:Chester v. Miller (full text)

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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.