Talk:Chester v. Miller (full text)

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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.