Ex Parte Robbins

Board of Patent Appeals and Interferences

Oct 27, 2009

10227911 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JO ANNE ROBBINS
____________

Appeal 2009-001866
Application 10/227,911
Technology Center 1600
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Decided: October 27, 2009
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Before TONI R. SCHEINER, ERIC GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
Appellant requests a rehearing under 37 C.F.R. § 41.52(a)(1) of our
Decision entered May 21, 2009 (“Decision”) in which the obviousness
rejection of claims 1, 2, 5, 8, and 10-26 was affirmed.

Appeal 2009-001866
Application 10/227,911

STATEMENT OF THE CASE
The claimed invention is directed to a kit comprising edible solutions
and a method of using the kit to evaluate human subjects for dysphagia.
Dysphagia is an abnormality in swallowing (Spec. 1). There are three
independent claims on appeal, each which includes at least two edible
solutions having different viscosities.
The Examiner rejected all the pending claims under 35 U.S.C.
§ 103(a) as obvious in view of Armstrong, U.S. Patent Application
Publication 2004/0228799 A1, published Nov. 18, 2004 (Ans. 4). Appellant
did not dispute the Examiner’s findings (Ans. 3-4) that the disclosure in the
Published Armstrong Application would have made the claimed subject
matter obvious to persons of ordinary skill in the art (FF41). Instead,
Appellant argued that the Published Armstrong Application was not entitled
to its earliest filing date of Oct. 5, 1998 because Armstrong abandoned the
parent application in the face of § 112 and § 132 rejections and filed a
continuation-in-part (“CIP”) application which contained new supporting
disclosure (App. Br. 4-5). Appellant asserted that without the benefit of its
earliest filing date, the Armstrong application is not prior art to the instant
application and the § 103 rejection should be withdrawn.
Appellant argued that Armstrong’s actions gave rise to estoppel that
prevented the PTO from relying on the Published Armstrong Application as
having an effective prior art date of Oct. 5, 1998, rather than the Feb. 12,
2004 date when the continuation-in-part application was filed. Appellant
contended:

1 “FF” refers to the Findings of Fact set forth in the Decision.
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Armstrong’s abandonment (without traverse or appeal) of her
parent application gives rise to an estoppel that prevents the
PTO from taking the position that the claims present in
Armstrong's application (which are the same as those rejected
in the parent) are now entitled to the filing date of the parent
application. The PTO has already stated on the record that these
claims are not supported by the Armstrong parent application.
(App. Br. 7.)
In our Decision dated May 21, 2009, we rejected Appellant’s estoppel
theory and affirmed the obviousness rejection.

STATEMENT OF THE ISSUE
Appellant contends that we erred in determining that the Published
Armstrong Application, filed Feb. 12, 2004, was entitled to the Oct. 5, 1998
filing date of its parent application, Serial No. 09/166,554. If our
determination was incorrect, the Published Armstrong Application is not
prior art to the instant application.

FINDINGS OF FACT
For clarity, we reproduce the Findings of Fact set forth on page 3 of
the Decision:
1. Armstrong is a patent application published under 35 U.S.C. § 122(b)
which has a filing date of Feb. 12, 2004 (hereinafter, “Published Armstrong
[A]pplication”).
2. The Published Armstrong application is a continuation-in-part of an
application filed on Oct. 5, 1998 (hereinafter, “the earlier [filed or parent]
Armstrong application” [Serial No. 09/166,554]).
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3. The instant application2 has a filing date of Aug. 26, 2002 (see “Bib Data
Sheet”), which is before the Published Armstrong [A]pplication filing date,
but after the filing date of the earlier Armstrong application.
4. Appellant does not dispute the Examiner’s findings (Ans. 3-4) that the
disclosure in the Published Armstrong [A]pplication would have made the
claimed subject matter obvious to persons of ordinary skill in the art.
5. Appellant does not dispute the Examiner’s findings (Ans. 5-9) that the
disclosure relied upon in the Published Armstrong [A]pplication in rejecting
the claimed subject matter is described in the earlier [filed or parent]
Armstrong application.

ANALYSIS
During prosecution of Armstrong’s earlier filed patent application
Serial No. 09/166,554 (FF2), the Examiner had rejected the claims under
§ 112, first and second paragraphs, and as attempting to add “new matter” in
contravention of § 132 (App. Br. 5). Armstrong abandoned the application
without responding to the Final Office Action, and filed a continuation-in-
part application which added passages refused entry in the parent application
(id. at 6). The CIP application was published and corresponds to the
Published Armstrong Application cited in this appeal. Appellant contends
that Armstrong clearly accepted the rejections in the parent application by
not traversing them, but instead filing a new CIP application (id. at 7). The
issue put forth by Appellant in this appeal is whether Armstrong’s action in
abandoning its Oct. 5, 1998 parent application in response to § 112 and

2 The “instant application” is a reference to Application Serial Number
10/227,991, which is the subject of this appeal.
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§ 132 rejections serves as estoppel that prevents the PTO from taking the
position in this case that Armstrong is now entitled to the parent
application’s filing date (App. Br. 6-7).
In our Decision dated May 21, 2005, we rejected Appellant’s estoppel
theory on the narrow ground that Armstrong’s action during prosecution of
its own application would not bar the PTO from taking a different position in
the instant application because estoppel is confined to the party’s own acts –
which in this case would be Armstrong’s abandonment of the parent
application and its filing of a CIP (Decision 5).
The PTO’s own action in rejecting the claims of the earlier filed
Armstrong application under § 112 is unavailing because no claim was
granted; the application was abandoned. Therefore, the determination of
whether a patented claim is entitled to the filing date of the parent
application was not finally decided by the agency.
To support her position that the Board erred, Appellant cited several
cases decided by the courts which she asserted establish that “the prohibition
against honoring the priority claim is not limited solely to the Applicant.”
(Reg. Reh’g 2.) “[T]hese cases do not address who is estopped from doing
what, but rather what action per se is forbidden.” (Id.) We have
considered these cases, but they do not persuade us that our reasoning was
erroneous. The additional discussion below is for further clarification and to
address certain points raised by Appellant, but is not intended to modify the
original Decision. Rather, we stand by the facts and reasoning as presented
therein.
For a patent to be entitled to the filing date of a previously-filed parent
application, the parent application must disclose the later-claimed subject
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matter in a manner which is compliant with 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 120. The controlling case on this point is In re Wertheim, 646
F.2d 527 (CCPA 1981), cited in footnote 5 of our Decision. Wertheim held
that a CIP application, which matured into a patent, was not automatically
entitled to the parent application filing date for all subject matter carried
over into it from the parent application. Id. at 535-36. Rather, the parent
application whose filing date is needed to make the rejection must disclose
the claimed invention in compliance with § 112, first paragraph. Id. at 537.
If, for example, the PTO wishes to utilize against an applicant a
part of that patent disclosure found in an application filed
earlier than the date of the application which became the patent,
it must demonstrate that the earlier-filed application contains
§§120/112 support for the invention claimed in the reference
patent.
Id.
Wertheim’s rationale for holding that the patent was only effective for
prior art as of the filing date on when it complied with § 112 was based on
the Supreme Court jurisprudence that
“but for” the delays in the Patent Office, the patent would have
earlier issued and would have been prior art known to the
public. The patent disclosure in Milburn was treated as prior art
as of its filing date because at the time the application was filed
in the Patent Office the inventor was presumed to have
disclosed an invention which, but for the delays inherent in
prosecution, would have been disclosed to the public on the
filing date. A continuation-in-part application, by definition,
adds new matter to the parent application previously filed.
Thus, the type of new matter added must be inquired into, for if
it is critical to the patentability of the claimed invention, a
patent could not have issued on the earlier filed application and
the theory of Patent Office delay has no application.
Id. at 536.
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The reasoning put forth in Wertheim is not applicable to the facts in
this appeal. The Published Armstrong Application is not a granted patent as
in the Wertheim case, but rather it is an application published pursuant to 35
U.S.C. § 122(b),3 a statute enacted years after the Wertheim decision. The
“but for” legal fiction upon which Wertheim was based does not apply to a
patent application which, when filed on Feb. 5, 2004, was required under 35
U.S.C. § 122(b) to be published after the expiration of a mandated period.
See Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008) (cited in fn. 5 of
the Decision). Therefore, unlike the circumstances in Wertheim, publication
did not entail further action by the patent applicant or the PTO, and,
significantly, a patentability determination was not a condition precedent to
publication as was the case in Wertheim. Consequently, the framework that
prevailed prior to enactment of the § 122(b) publication requirement is not
logically extended to published patent applications.
When a patent application is published, the claims appended to it have
not been granted by the PTO. Because they are application claims, the PTO
has yet to have made a final determination as to whether the claimed subject
matter conforms to the patentability requirements of Chapter 35 of the U.S.
Code. Yet, the published application makes its disclosure, and that of any
parent applications, available to the public. Such disclosure, which
necessarily becomes available upon fulfillment of the § 122(b) publication
requirement, is explicit evidence of the activity of another as of the earliest

3 35 U.S.C. § 122(b)(1)(A). “Subject to paragraph (2), each application for a
patent shall be published, in accordance with procedures determined by the
Director, promptly after the expiration of a period of 18 months from the
earliest filing date for which a benefit is sought under this title.”

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claimed filing date. It is not logical to withdraw it as prior art on a
technicality, when the filing date firmly establishes the existence of prior art
on that date. In our opinion, a published patent application which is
statutorily destined to be published constitutes prior art for all that it
discloses on its earliest filing date.
Nevertheless, as we stated on pages 5-6 of the Decision:
Because the Armstrong Published Application is a
continuation-in-part of the earlier filed application, the
Examiner had the burden of showing that the disclosure relied
upon in rejecting the claimed subject matter is entitled to the
earlier filing date. The present Examiner made specific factual
findings tracing support for the disclosure relied on in the
Armstrong Published Application to Armstrong’s earlier
application. At that point, Appellant had the opportunity to
show that Armstrong’s earlier application is defective.

Appellant did not do so (FF4, FF5).

REHEARING DENIED

cdc

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