ULF Bamberg et al. v. Jodi A. Dalvey et al.

Docket No. 2015-1548

March 9, 2016

Brief Summary: Board decision in an interference that Bamberg’s specification did not disclose the claimed subject matter (“Bamberg…specifically distinguished white layers that melt below 220oC as producing an ‘undesired’ result”) and refusing to enter Bamberg’s amendment because it did not submit the required claim chart affirmed.

Summary: ULF Bamberg appealed from PTAB consolidated interference proceeding decision refusing to allow the claims of four patent applications, relating to methods for transferring printed images onto dark colored tiles by ironing over transfer paper, for failing to meet the written description (WD) requirements. The disputed claims originated in four Dalvey patents which Bamberg copied into four patent applications to provoke the interferences (the Board declared three). Bamberg was declared the senior party, requiring Dalvey to prove an early priority date by a preponderance of the evidence. Under Agilent (FC 2009), “the Board reviewed the claims in view of the Dalvey patent specification” and concluded “the claims also include within their scope a white later that melts at temperatures below 220oC”. Dalvey argued Bamberg’s claims were unpatentable for lack of WD (“below 220oC”) and the Board agreed. In this appeal, Bamberg argued the Board erred by “improperly importing a functional limitation requiring the white later to melt below 220oC.” The opinion explained that the claims were given their broadest reasonable construction (Microsoft, FC 2015) in light of the Dalvey specification (Harari, FC 2011; In re Spina, FC 1992) because this is an interference. The Board “concluded that the ‘white layer’ does not have a minimum melting temperature”; the FC panel found no error with this conclusion (BRI “of ‘white layer’ includes within its scope a white layer that melts at temperatures both above and below 220oC”). The FC panel also concluded the Board properly found Bamberg’s specification fails to describe “a white layer that melts at temperatures both above and below 220oC” (Tronzo, FC 1998 (claims could not claim priority to the parent patent and were anticipated without that priority date); Goeddel, FC 2010; “Bamberg…specifically distinguished white layers that melt below 220oC as producing an ‘undesired’ result”). The Board also denied Bamberg’s motion to amend because it “failed to provide a claim chart as required by 37 CFR 41.110(c)(2)” which was found proper as Bamberg “failed to comply with the regulations”. Thus, the Board decision was affirmed.

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