“Person of Ordinary Skill in the Art” Standard Applies in Evaluating Continuity of
`Disclosure in a Priority Chain
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`11-1276
`June 07, 2012
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` Decision
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`Last Month at the Federal Circuit - July 2012
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`Judges: Prost (author), Mayer, O'Malley
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`[Appealed from: Board]
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`In Hollmer v. Harari, No. 11-1276 (Fed. Cir. June 7, 2012), the Federal Circuit reversed and remanded, because the
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`Board misinterpreted the Court’s earlier decision in Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (“Harari I”), in
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`finding that continuity was maintained in the chain of priority between two applications involved in an interference.
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`U.S. Patent Application No. 09/310,880 (“the ’880 application”), assigned to Eliyahou Harari and Sanjay Mehrotra
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`(collectively “Harari”), is the fifth in a chain of continuation and divisional applications beginning with U.S. Patent
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`Application No. 07/337,566 (“the ’566 application”), and continuing with U.S. Patent Application No. 07/963,838 (“the
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`’838 application”), then U.S. Patent Application No. 08/174,768 (“the ’768 application”), then U.S. Patent Application
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`No. 08/771,708 (“the ’708 application”) just before the ’880 application. The original ’566 application was filed on the
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`same day as U.S. Patent Application No. 07/337,579 (“the ’579 application”), also to Harari, and included a statement
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`incorporating the ’579 application by reference. The incorporation language identified the ’579 application only by its
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`title and as “copending” with and “filed on the same day as the present application.” Slip op. at 3 (emphasis and
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`citation omitted).
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`The ’880 application included the same “incorporation by reference” statement as the original ’566 application, but was
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`filed with a preliminary amendment adding material from the ’579 application and explicitly identifying the ’579
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`application in the “incorporation by reference” statement. The original incorporation statement from the ’566 application
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`was also present in the intervening ’838 and ’768 applications. These intervening applications were not amended to
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`identify the ’579 application by serial number and filing date.
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`During the interference, Shane C. Hollmer and Lee E. Cleveland (collectively “Hollmer”) argued that material
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`incorporated into the ’880 application in the preliminary amendment constituted new matter because the ’579
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`application was not identified in the original disclosure, and that the claims of the ’880 application were therefore
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`unpatentable for lack of written description. The Board agreed, but was reversed by the Federal Circuit in the first
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`appeal, Harari I. In that appeal, the Court explained that a “reasonable examiner” standard applied when evaluating
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`the sufficiency of the incorporation by reference at the initial filing stage, and concluded that a reasonable examiner
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`would have understood the original incorporation statement to refer to the ’579 application.
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`On remand, the parties disputed whether the ’880 application was entitled to claim the benefit of the original ’566
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`application. Hollmer argued that Harari was not entitled to claim priority back to the ’566 application because the
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`intervening ’838 and ’768 priority applications did not properly incorporate the ’579 application by reference, and
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`therefore did not provide the continuity of disclosure required for a priority claim under 35 U.S.C. § 120. Applying the
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`“reasonable examiner” standard of Harari I, the Board entered judgment against Hollmer.
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`In the instant appeal, the issue before the Federal Circuit was what standard should apply in reviewing whether such
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`incorporation statements satisfy the continuity requirements of § 120.
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`The Court first noted that each application in a priority chain must comply with the written description requirement of 35
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`U.S.C. § 112. Hence, in order for the ’880 application to be entitled to claim priority to the ’566 application, the
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`intervening ’838 and ’768 applications must have incorporated the ’579 application by reference. Further, the Court
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`found that Harari I, which did not address the intervening applications, did not resolve this question. Moreover, Harari I
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`dealt with a “narrow circumstance” for which the “reasonable examiner” standard was appropriate, i.e., when an
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`initially filed application with ambiguous incorporation by reference language was before an examiner. In contrast, the
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`appropriate standard when evaluating continuity of disclosure is that of the person of ordinary skill in the art. Finally,
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`because § 120 requires that the disclosure actually appear within the specification, and because amendments in later
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`applications cannot cure an otherwise defective application in the priority chain, the Court explained that the
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`“incorporation by reference” analysis is constrained by the four corners of the application.
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`Applying the “person of ordinary skill” standard, the Court concluded that the incorporation language in the intervening
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`applications did not identify the ’579 application with adequate particularity. First, those applications were neither “filed
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`on the same day as,” nor “copending” with, the ’579 application. In addition, because there were at least two other
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`applications by the same inventors that had the same title as the ’579 application and were copending with the ’838
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`application, the person of ordinary skill in the art would not have known which application the inventors intended to
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`incorporate. Therefore, the ’880 application was not entitled to claim the benefit of the intervening ’838 and ’768
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`applications, or the original ’566 application.
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`Thus, the Court reversed the Board’s decision and remanded the case to the Board to enter judgment that the
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`effective filing date of the ’880 application is the filing date of the immediately preceding application in the chain and for
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`further proceedings consistent with its opinion.
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`Summary authored by Mayssam H. Ali, Ph.D., student associate at Finnegan.