Docket No. 2017-1962
PROST, MOORE, REYNA
October 1, 2018
Brief summary: Board affirmance of examiners rejections affirmed as NAI was not entitled to an earlier priority date from a chain of applications because an intervening CIP disclaimed priority to the earlier applications.
Summary: NAI appealed Board decision following inter partes reexamination of NAI’s US 8,067,381 affirming the examiner’s rejection for anticipation or obviousness and denying NAI’s request for rehearing. The ‘381 patent issued from a chain of eight applications. During reexamination, Woodbolt (which requested the reexamination but is not a party to this appeal; FN2 indicates Woodbolt and NAI settled their lawsuit regarding the ‘381 patent) “alleged that ‘the asserted claim to priority of the ‘381 Patent is defective’ because the ‘applicants deliberately and expressly terminated their claim to the priority of the first four applications[,]’ which thus ‘broke the chain of priority between the Fourth and Fifth Applications.” “During reexamination, NAI did not dispute that it had waived priority to the fourth through the first applications in its fifth application” (a continuation-in-part (CIP)) but argued that was irrelevant because “the sixth application maintained priority back to the first application”. The examiner was not persuaded and “rejected the reexamined claims in view of prior art including the ‘596 patent (i.e., the patent that issued from the first application), and then closed prosecution.” Responding to NAI’s appeal, “[t]he Board determined that when NAI filed the eighth application, ‘[t]he fifth application [was] not entitled to the benefit of the fourth application since the specific reference to the fourth application was deleted in the fifth” and, therefore, the ‘381 patent was “not entitled to the benefit of the fourth through the first applications.” The FC panel reviewed the Board’s priority determination (a legal conclusion) de novo as there were no relevant disputed factual issues. The FC panel first explained that it has “previously acknowledged that amending an earlier-filed parent application may affect the priority of its child applications” (In re Janssen, FC 2018; Searle, FC 2015), and found the Board did not err “because the fifth application lacked priority to the first application” and therefore “the eight application’s priority claim to the first application (via the fifth application) did not satisfy all of § 120’s requirements” (application not entitled to priority, the patentee must demonstrate entitlement to the USPTO (In re NTP, FC 2011)). NAI also argued “that although ‘a claimed benefit to an earlier filing date may later be altered in the instant application according to MPEP § 201.11…that alteration only applies to the instant application-not other,…applications”. After first noting “that the MPEP ‘does not have the force of law’” (Molins, FC 1995), the FC panel explained that it “reviewed MPEP § 201.11 and [found] nothing in its text that limits the scope of waiver to only the instant application”. NAI also argued that under “§ 120, the case law”, “merely adding an additional link in a single growing chain…must be interpreted as providing for a new priority claim being created at each new filing” but the FC panel disagreed (Godfrey, US 1863 (“under § 120, parent and continuing applications ‘are to be considered as parts of the same transaction”)). NAI also argued “that the Board’s determination impermissibly ‘limits an applicant’s ability to seek protection’ when ‘amending the priority claim to gain [patent] term” but the FC panel explained that “NAI cannot have it both ways.”