On March 24, the Federal Circuit held in In re Riggs that for a published non-provisional patent application to be prior art under pre-AIA 35 U.S.C. § 102(e)(1) based on an earlier provisional filing date, all citations to the non-provisional made in a prior art rejection or invalidity assertion must be supported by the earlier provisional.
The Federal Circuit vacated and remanded a decision by the U.S. Patent Trial and Appeal Board (PTAB) in which the PTAB had determined that a published patent application, the Lettich non-provisional, qualified as prior art under pre-AIA 35 U.S.C. § 102(e)(1) and affirmed the Examiner’s novelty and obviousness rejections of the appellant’s claims in view of the Lettich non-provisional.
According to pre-AIA 35 U.S.C. § 102(e)(1), a person shall be entitled to a patent unless the invention was described in an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent. The issue at hand was whether the Lettich non-provisional was entitled to its priority date, such that the Lettich non-provisional was a proper prior art reference under pre-AIA 35 U.S.C. § 102(e)(1).
The Appellant’s application was filed on December 7, 2004 and claimed priority to July 28, 2000. The cited Lettich reference was a published U.S. application filed on April 26, 2001 that claimed priority to a provisional filed on April 27, 2000.
The Examiner and PTAB had relied upon Dynamic Drinkware, LLC v. National Graphics, Inc., and MPEP § 2136.03 to conclude that Lettich was a proper reference under § 102(e)(1) because at least claim 1 of the Lettich non-provisional was supported by the Lettich provisional. The Federal Circuit noted that while the Examiner and PTAB had demonstrated that claim 1 of the Lettich non-provisional was supported by the Lettich provisional, the Examiner had relied upon other portions of the Lettich non-provisional to support the prior art rejections.
The Federal Circuit held that the provisional must provide written description support for all portions of the non-provisional that are relied upon in a prior art rejection (or by a party asserting invalidity). The Federal Circuit agreed that the PTAB had properly found written description support in the Lettich provisional for each limitation of Lettich non-provisional claim 1. However, the Federal Circuit further found that the PTAB’s review had been incomplete because the PTAB had not reviewed whether each of the other portions of the non-provisional relied upon in the Examiner’s prior art rejection were supported by the provisional. As noted by the Federal Circuit, it would make no sense that a single claim of a non-provisional could be supported by a provisional but then everything else from the non-provisional gets the benefit of the earlier filing date. Accordingly, the Federal Circuit vacated the PTAB’s decision and remanded for further analysis of whether Lettich qualifies as prior art under pre-AIA 35 U.S.C. § 102(e)(1).
This decision clarifies and limits how provisional applications can be relied upon by examiners making prior art rejections, or by litigants making invalidity assertions, based on pre-AIA 35 U.S.C. § 102(e)(1).
For more information on this decision, please contact Fitch Even partner Calista Mitchell, author of this alert.
Fitch Even IP Alert®
Calista J. Mitchell
Calista Mitchell practices in all areas of intellectual property law, with a primary focus on counseling clients in developing comprehensive international IP development, protection, acquisition, and enforcement strategies.
