Harari v. Hollmer

United States Court of Appeals for the Federal Circuit
2009-1406
(Interference No. 105,606)

ELIYAHOU HARARI
and SANJAY MEHROTRA,

Appellants,

v.

SHANE C. HOLLMER
and LEE E. CLEVELAND,

Appellees.

William A. Birdwell, Davis Wright Tremaine LLP, of Portland, Oregon, argued for
appellants. With him on the brief was Timothy R. Volpert.

Martin C. Fliesler, Fliesler Meyer LLP, of San Francisco, California, argued for
appellees. With him on the brief was Rex Hwang.

Thomas J. D’Amico, Dickstein Shapiro LLP, of Washington, DC, for amicus
curiae. With him on the brief were Eric Oliver and Megan S. Woodworth.

Appealed from: United States Patent and Trademark Office
Board of Patent Appeals and Interferences
 United States Court of Appeals for the Federal Circuit
2009-1406
(Interference No. 105,606)

ELIYAHOU HARARI
and SANJAY MEHROTRA,

Appellants,

v.

SHANE C. HOLLMER
and LEE E. CLEVELAND,

Appellees.

Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.

__________________________

DECIDED: April 19, 2010
__________________________

Before BRYSON, ARCHER, and PROST, Circuit Judges.

PROST, Circuit Judge.

This case is an appeal from the Board of Patent Appeals and Interferences

(“BPAI” or “Board”) concerning Patent Interference No. 105,686(JL) between junior

party inventors Eliyahou Harari and Sanjay Mehrotra (collectively “Harari”) named on

pending U.S. Patent Application No. 09/310,880 (“’880 application”), and senior party

inventors Shane C. Hollmer and Lee E. Cleveland (collectively “Hollmer”) named on

U.S. Patent No. 5,828,601. The Board dismissed Harari from the interference, finding

that Harari’s claims were unpatentable for lack of written description due to an

insufficient incorporation by reference statement. Because we disagree with the
Board’s legal conclusion as to the sufficiency of the incorporation by reference

statement, we reverse the Board’s dismissal and remand the case for further

proceedings consistent with this opinion.

BACKGROUND

The disputed ’880 patent application claims priority to a chain of patent

applications, beginning with U.S. Patent Application No. 07/337,566 (“’566 application”)

(abandoned). The ’880 application is a continuation of U.S. Patent Application No.

08/771,708, which is a continuation of U.S. Patent Application No. 08/174,768, which is

a continuation of U.S. Patent Application No. 07/963,838, which is a divisional of the

original ’566 application.

The ’566 application was filed on the same day as U.S. Patent Application No.

07/337,579 (“’579 application”), and contained the statement:

Optimized erase implementations have been disclosed in two copending
U.S. patent applications. They are copending U.S. patent applications,
Serial No. 204,175, filed June 8, 1988, by Dr. Eliyahou Harari and one
entitled “Multistate EEprom Read and Write Circuits and Techniques,” filed
on the same day as the present application, by Sanjay Mehrotra and Dr.
Eliyahou Harari. The disclosures of the two applications are hereby
incorporated by reference.

The application also refers to the ’579 application by title in a later paragraph. Each

related application claiming priority to the ’566 application contained similar statements.

During the interference proceeding, Harari filed a motion seeking the benefit of

the original filing date of the parent application under 35 U.S.C. § 120. Hollmer filed a

competing motion asserting that all claims in the ’880 application were unpatentable for

lack of written description under 35 U.S.C. § 112, first paragraph. The Board granted

2009-1406 2
Hollmer’s motion, finding the claims unpatentable. The Board then dismissed Harari’s

motion on the grounds that it lacked standing to proceed further in the interference.

The ’880 application at issue in the present interference included a transmittal

sheet identifying the filing as a continuation application, a photocopy of the ’566

application as originally filed, a preliminary amendment revising the ’566 application,

and a copy of the inventors’ declaration filed in the immediately preceding ’708

application. The transmittal sheet specifically states that the application is a

continuation of the ’708 application (immediately preceding) and the inventors’

declaration submitted is a copy of the declaration filed in the original parent application.

The preliminary amendment revises the incorporation by reference statement to

delete the “same day as the present application” language from the ’566 disclosure and

instead refer to the ’579 application by serial number and filing date. The preliminary

amendment adds the serial number and filing date to the other mention of the ’579

application as well. The preliminary amendment also inserts several paragraphs of text

and drawing sheets copied from the ’579 application and adds new claims directed, at

least in part, to that material.

In the “Remarks” section of the preliminary amendment, the applicant explains

that the present application is a continuation of the ’708 application, and follows the

chain back to the initial ’566 parent application. The applicant explains that the “present

application” language in the incorporation by reference statement refers to the initial

parent application, and incorporates the ’579 application, which was filed on the same

day as the initial parent application. The applicant then explains that the text and

drawings added to the present application are copied from the ’579 application.

2009-1406 3
 The examiner conducting the interference noted that the inventors’ declaration

did not refer to the preliminary amendment, and therefore did not treat the preliminary

amendment as part of the original disclosure under 37 C.F.R. § 1.63. But see 37 C.F.R.

§ 1.115(a)(1)(2004) (“A preliminary amendment that is present on the filing date of an

application is part of the original disclosure of the application.”). The examiner rejected

the preliminary amendment’s incorporation of content from the ’579 application as new

matter under 35 U.S.C. § 132, finding that the original disclosure did not clearly identify

the ’579 application as being incorporated by reference.

Harari appealed to the BPAI. The Board agreed with the examiner that one

could not tell from the original disclosure whether the incorporation language referred to

an application filed on the same day as the ’566 application, or on the same day as the

’880 application. The Board found that the incorporation language was so confusing in

this way that it could not support the insertion of information from the ’579 application

into the ’880 disclosure by preliminary amendment. It therefore affirmed the examiner’s

rejection of the preliminary amendment as new matter.

Harari timely appealed to this court. This court has jurisdiction under 28 U.S.C.

§ 1295(a)(4)(A).

DISCUSSION

Whether and to what extent a patent incorporates material by reference is a

question of law reviewed de novo. Cook Biotech Inc. v. Acell, Inc., 460 F.3d 1365, 1376

(Fed. Cir. 2006).

Prior to 2004, the effective date of 37 C.F.R. § 1.115(a)(1), a preliminary

amendment was not automatically considered part of the original disclosure of the

2009-1406 4
application with which it was filed. Nonetheless, at the time Harari filed the ’808

application, examiners were instructed to enter all amendments, whether part of the

original disclosure or not. See Manual of Patent Examining Procedure 608.04(a) (7th

ed., July 1998) (“MPEP”). If an amendment was not part of the original disclosure, the

examiner then determined whether that amendment included new matter. Id. In the

context of a continuation application, the examiner’s inquiry was whether the

amendment added to the continuation application “anything which would constitute new

matter if inserted in the original application.” Id. at 201.07; 37 C.F.R. § 1.53(b).

Harari argues on appeal that the Board erred in finding the “present application”

language in the original disclosure to be so confusing that it did not sufficiently

incorporate the ’579 application. Harari argues that the ’880 application filing makes

clear to any reader that the “same day as the present application” is the day on which

the parent application was filed. He argues that the inventor’s declaration need not

refer to the preliminary amendment in order for the examiner to enter the amendment

because the preliminary amendment does not contain any new matter compared to the

initial parent application. 37 C.F.R. § 1.63(d)(1)(iii).

Hollmer defends the Board’s decision by arguing that Harari’s “present

application” language is ambiguous and context-specific. Hollmer argues that this

ambiguity leaves the reader in doubt as to what disclosure is being incorporated into the

’880 application, and thus does not satisfy the applicant’s legal obligations. See

Northrop Grumman Info. Tech., Inc. v. United States, 535 F.3d 1339, 1344 (Fed. Cir.

2008) (holding that an incorporation by reference statement should leave no doubt as to

what reference is being incorporated).

2009-1406 5
 We agree with Harari that the ’880 application as filed adequately incorporates

the ’579 application by reference, and does not constitute new matter. The Board’s

analysis to the contrary is flawed in several ways. We address each in turn.

First, in rejecting the preliminary amendment as new matter, the Board failed to

compare the content of the preliminary amendment against the initial parent application.

MPEP 201.07; 37 C.F.R. § 1.53(b). At the time the ’566 application was filed, the co-

pending and simultaneously filed ’579 application had not yet been assigned a serial

number or awarded a filing date. Thus, the title of the application, named inventors, and

the fact that the application was filed on the same day as the ’566 application

constituted all of the identifying information available to the drafter of the ’566

application. This information was sufficient to unambiguously identify and incorporate

by reference the disclosure of the ’579 application into the disclosure of the ’566

application. According to Harari, the preliminary amendment contains only content

directly cut and pasted from ’579 application. 1 The preliminary amendment thus does

not contain new matter compared to the initial parent application. When entered, the

preliminary amendment revises the disputed “present application” language, resolving

any alleged confusion presented by the manner in which the ’880 application was filed.

In addition to failing to compare the preliminary amendment to the initial parent

disclosure, the Board appears to have applied the wrong standard in determining that

the incorporation language was confusing. The disputed continuation application is at

the initial filing stage, where the examiner is first presented with an original disclosure

1
Hollmer concedes that if the ’579 application was properly incorporated by
reference, then the ’880 application as amended would contain no new matter
compared to the original parent.

2009-1406 6
and a preliminary amendment. The proper standard by which to evaluate the

sufficiency of incorporation by reference language, at this stage of the proceedings, is

whether the identity of the incorporated reference is clear to a reasonable examiner in

light of the documents presented. 2 In other words, the relevant inquiry is whether a

reasonable examiner would be so befuddled by the language of the original disclosure,

despite the explanation provided in the transmittal and preliminary amendment, that he

could not determine what document was intended to be incorporated by reference. See

In re Fouche, 439 F.2d 1237, 1239 (CCPA 1971); see also 37 C.F.R. § 1.57(g)(2).

We are not swayed by the Board’s allegation that deciphering the identity of the

incorporated reference would require a massive investigation and extensive detective

work into external documents. At this stage of the examination, the examiner’s

determination is not confined to the photocopy of the initial parent disclosure on its face,

nor does it require investigation beyond the documents filed. The examiner is

presented with a transmittal sheet identifying the nature of the documents submitted

and a preliminary amendment with “remarks” section explaining what documents are

before the examiner and how they relate to each other.

There is no situation in which the context-specific “present application” language

would be read out of context and result in the alleged confusion. The accompanying

2
Harari argues that the correct standard is how the statement would be
understood by one of skill in the art. We agree with Harari that if we were determining
the validity of an issued patent containing the disputed incorporation by reference
statement, “filed on the same day as the present application,” where that language
actually refers to an application other than the one issued, then we would be concerned
with whether one of ordinary skill in the art could identify the information incorporated.
The present case, however, does not involve an issued patent or language that is
intended to appear in an issued patent. Thus the proper lens through which to view the
disputed language is that which is ascertainable to a reasonable examiner.

2009-1406 7
transmittal and preliminary amendment provide the very context needed by the

examiner to decipher the disputed language. The preliminary amendment replaces the

disputed language with objectively clear language, such that any issued patent or

published application later presented to one of skill in the art would not contain the

disputed language.

One solution to this problem suggested by the Board was for the inventors to file

a new declaration, referring to the preliminary amendment. The preliminary amendment

would then have been entered, and the amended disclosure examined accordingly.

Entering the preliminary amendment, however, would incorporate the ’579 application,

resulting in an application containing no new matter and needing no new inventors’

declaration. For the Board to require that an applicant file a new inventors’ declaration

in order to prove that the application contains no new matter and thus does not require

a new inventors’ declaration is circular and unreasonable.

The other solutions suggested by the Board are similarly unreasonable. The

Board suggests that the applicant should not have filed his continuation in the form of a

photocopy of the parent application and preliminary amendment. Instead, according to

the board, the applicant should have filed an original disclosure that referred to the ’579

application by serial number. The Board also suggests that the applicant should have

avoided using context-specific timing language in the first place. Although there may

have been other ways to file the application, and more precise ways to communicate

the unknown filing date, the form and language chosen by the applicant does not violate

any rule or procedural requirement. The “present application” language was never

2009-1406 8
objected to by any examiner during prosecution of the ’566 application or during the

prosecution of any other continuation or divisional applications.

It is not inappropriate for an application to identify for the purposes of

incorporation by reference a co-pending application by title, inventors, and a context-

specific filing date, where such information is sufficient to identify the application at the

time the information is presented. 37 C.F.R. § 1.57(g)(2). It is not new matter, and

indeed it is strongly encouraged, to later amend the identifying language to recite a

serial number and filing date, when that information becomes available. Id.; see also

Scarring Corp. v. Megan, Inc., 222 F.3d 1347, 1352-53 (Fed. Cir. 2000) (holding that

renaming or re-identifying items in the disclosure to comport with later-developed and

more precise nomenclature is not new matter). There is no specific deadline by which

such a clarifying amendment must be made.

It makes no difference that the clarifying amendment was made for the first time

by a preliminary amendment to a continuation application, rather than during

prosecution of the now abandoned initial parent application. 3 Presented with the

application and accompanying documents in this case, no reasonable examiner would

be confused as to what document was being identified in the incorporation by reference

statement, nor would he be unable to determine on the merits whether the newly

presented claims were supported by the originally filed (’566 application) disclosure.

3
But cf. MPEP 608.01(p) (requiring a corrective amendment to be made by
the close of prosecution of the parent application where an examiner has rejected the
incorporation by reference statement as noncompliant under 37 CFR 1.57(b), (c), or
(d)). Here, the examiner did not reject the incorporation statement during prosecution of
the initial parent application, or in any subsequent application containing the same
statement (until the present interference).

2009-1406 9
 Accordingly, we reverse the decision of the BPAI and remand the case with

instructions to resolve the interference proceeding in a manner consistent with this

opinion.

REVERSED AND REMANDED

2009-1406 10