Harari, et al. v. Hollmer, et al., No. 2009-1406 (Fed. Cir. Apr. 19, 2010).

A patent applicant involved in a patent interference proceeding appealed a finding by the Board of Patent Appeals and Interferences (“Board”) that the claims of its present ‘880 application were unpatentable for lack of written description. The Board had affirmed the examiner’s ruling that the applicant’s attempts to incorporate by reference disclosure from a parent ‘566 application was insufficient. On appeal, the Federal Circuit reversed, finding that the applicant properly included clarifying language in a preliminary amendment to sufficiently incorporate by reference the relevant disclosure in the parent ‘566 application.

During the interference, the applicant sought to obtain the benefit of the original filing date of a parent ‘566 application. The disclosure in the parent ‘566 application referenced two co-pending applications that were “filed on the same day as the present application,” and in one case only providing the inventor names and title of the application. In a preliminary amendment for the ‘880 application, the applicant amended the specification by replacing the “filed on the same day as the present application” language with clarifying information for the ambiguous application, including its serial number and filing date. In the “Remarks” section of the preliminary amendment, the applicant also explained the reasons for the substitution and insertion of clarifying language.

The Federal Circuit found that the applicant’s substitution and explanation was sufficient to incorporate by reference the disclosure in the parent ‘566 application. The court found that the Board and the examiner erred when they 1) noted that the applicant’s declaration did not refer to the preliminary amendment and thus did not treat the preliminary amendment as part of the ‘880 application’s original disclosure; and 2) then could not tell from the original disclosure whether the incorporation language referred to an application filed on the same day as the parent ‘566 application or the present ‘880 application. In determining 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,” the court found that the applicant’s substitutions and explanations actions were sufficient.

A copy of the opinion can be found here.