Addressing written description issues in connection with claims copied in order to provoke an interference, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s or Board’s) decision that the claims failed to meet the written description requirement. Bamberg v. Dalvey, 15-1548 (Fed. Cir., Mar. 9, 2016) (Hughes, J).

The technology at issue involves a method for transferring printed images onto dark-colored textiles by ironing over a specialty transfer paper. The transfer paper includes a removable substrate, a hot-melt adhesive, a white layer and an ink-receptive layer. The process works as follows: the user peels off the removable substrate, places the transfer sheet on top of the dark textile with the ink-receptive layer facing up, covers the sheet with the removable substrate and applies heat using an iron. The heat melts the hot-melt adhesive, which causes the white layer and ink-receptive layer to adhere to the textile. 

Dalvey obtained four patents for the above-described method. Bamberg copied the claims of those patents into its own patent applications and then sought to provoke an interference. The Board declared three interferences and determined that Bamberg was the senior party. Dalvey filed a motion alleging that Bamberg’s claims were unpatentable for lack of written description support under 35 USC § 112. Specifically, Dalvey argued that Bamberg’s copied claims cover a white layer that could melt at temperatures both above and below 220°C (the approximate temperature of a hot iron), while Bamberg’s PCT application only disclosed white layers that melt above 220°C. 

Copied claims in an interference proceeding are construed in accordance with the disclosure of the specification from which they originated—in this case, Dalvey’s specification. Dalvey’s specification disclosed embodiments having white layers that melt above and below 220°C, so the Board agreed with Dalvey that the claims encompass white layers that melt above and below this temperature. The Federal Circuit found no error with the Board’s claim construction. 

Having construed the claims, the Board evaluated whether Bamberg’s specification provided adequate support for claims that cover white layers that melt above and below 220°C. Bamberg’s specification taught that the invention comprised a white layer that did not and must not melt below 220°C, because to allow otherwise would produce an undesired result. In view of this teaching, the Board concluded that Bamberg’s specification did not provide written description support for white layers that melt below 220°C. 

The Federal Circuit found that the Board’s conclusion was supported by substantial evidence. According to the Federal Circuit, Bamberg did not possess a white layer that melts below 220°C degrees because the specification “specifically distinguished white layers that melt below 220°C as producing an ‘undesired’ result.” 

The Federal Circuit also affirmed the Board’s denial of Bamberg’s motion to amend its claims. During the interference, in response to Dalvey’s motion regarding lack of written description, Bamberg sought to amend its claims. The US Patent and Trademark Office regulations require that a motion to amend include a claim chart showing that the proposed new or amended claims are supported by adequate written description. Bamberg did not provide the required claim chart, so the Board denied the motion. The Federal Circuit found that this denial did not constitute an abuse of discretion. 

Practice Note: Before seeking to provoke an interference by copying claims, parties should ensure that the specification provides support for broad claims in a manner similar to that provided by the original specification. If such support is not present, then the party seeking to propose an amended claim (or courts) should do so as soon as practicable and include a claim chart showing § 112 support for the proposed amended claims.