2304.02 Applicant Suggestion [R-10.2019]
37 C.F.R. 41.202 Suggesting an interference.
- (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
- (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
- (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
- (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
- (4) Explain in detail why the applicant will prevail on priority,
- (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
- (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
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- (d) Requirement to show priority under 35 U.S.C. 102(g).
- (1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
- (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.
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When an applicant suggests an interference under 37 CFR 41.202(a), an examiner must review the suggestion for formal sufficiency. As explained in MPEP § 2304.02(c), the examiner is generally not responsible for determining the substantive adequacy of any priority showing. The examiner may, however, offer pertinent observations on any showing when the suggested interference is referred to the Board. The observations may be included as an attachment to the Form PTO-850.
Form paragraphs 23.06 to 23.06.06 may be used to acknowledge applicant’s suggestion for interference under 37 CFR 41.202(a) that failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.
¶ 23.06 Applicant Suggesting an Interference
Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed [1].
Examiner Note:
1. Use this form paragraph if applicant has suggested an interference under 37 CFR 41.202(a) and applicant has failed to comply with one or more of paragraphs (a)(1) to (a)(6) of 37 CFR 41.202.
2. In bracket 1, insert the date of applicant’s communication.
3. This form paragraph must be followed by one or more of form paragraphs 23.06.01 to 23.06.03 and end with form paragraph 23.06.04.
¶ 23.06.01 Failure to Identify the Other Application or Patent
Applicant failed to provide sufficient information to identify the application or patent with which the applicant seeks an interference. See 37 CFR 41.202(a)(1) and MPEP § 2304.02(a).
¶ 23.06.02 Failure to Identify the Counts and Corresponding Claims
Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b).
¶ 23.06.03 Failure to Provide Claim Chart Comparing At Least One Claim
Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c).
¶ 23.06.04 Failure to Explain in Detail Why Applicant Will Prevail on Priority
Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c).
¶ 23.06.05 Claim Added/Amended; Failure to Provide Claim Chart Showing Written Description
Claim [1] has been added or amended in a communication filed on [2] to provoke an interference. Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d).
¶ 23.06.06 Time Period for Reply
Applicant is given TWO (2) MONTHS from the mailing date of this communication to correct the deficiency(ies). EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133 ).
2304.02(a) Identifying the Other Application or Patent [R-08.2012]
37 C.F.R. 41.202 Suggesting an interference.
- (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
- (1) Provide sufficient information to identify the application or patent with which the applicant seeks an interference,
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Usually an applicant seeking an interference will know the application serial number or the patent number of the application or patent, respectively, with which it seeks an interference. If so, providing that number will fully meet the identification requirement of 37 CFR 41.202(a)(1).
Occasionally, an applicant will believe another interfering application exists based only on indirect evidence, for instance through a journal article, a "patent pending" notice, or a foreign published application. In such cases, information about likely named inventors and likely assignees may lead to the right application. The applicant should be motivated to help the examiner identify the application since inadequate information may prevent the declaration of the suggested interference.
2304.02(b) Counts and Corresponding Claims [R-08.2017]
37 C.F.R. 41.202 Suggesting an interference.
- (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
- *****
- (2) Identify all claims the applicant believes interfere, propose one or more counts, and show how the claims correspond to one or more counts,
- (3) For each count, provide a claim chart comparing at least one claim of each party corresponding to the count and show why the claims interfere within the meaning of § 41.203(a),
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The applicant must identify at least one patentable claim from every application or patent that interferes for each count. A count is just a description of the interfering subject matter, which the Board uses to determine what evidence may be used to prove priority under pre-AIA 35 U.S.C. 102(g)(1).
The examiner must confirm that the applicant has (A) identified at least one patentable count, (B) identified at least one patentable claim from each party for each count, and (C) has provided a claim chart comparing at least one set of claims for each count. The examiner need not agree with the applicant’s suggestion. The examiner’s role is to confirm that there are otherwise patentable interfering claims and that the formalities of 37 CFR 41.202 are met.
2304.02(c) Explaining Priority [R-08.2017]
37 C.F.R. 41.202 Suggesting an interference.
- (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
- (4) Explain in detail why the applicant will prevail on priority,
- *****
- (6) For each constructive reduction to practice for which the applicant wishes to be accorded benefit, provide a chart showing where the disclosure provides a constructive reduction to practice within the scope of the interfering subject matter.
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- (d) Requirement to show priority under 35 U.S.C. 102(g).
- (1) When an applicant has an earliest constructive reduction to practice that is later than the apparent earliest constructive reduction to practice for a patent or published application claiming interfering subject matter, the applicant must show why it would prevail on priority.
- (2) If an applicant fails to show priority under paragraph (d)(1) of this section, an administrative patent judge may nevertheless declare an interference to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. New evidence in support of priority will not be admitted except on a showing of good cause. The Board may authorize the filing of motions to redefine the interfering subject matter or to change the benefit accorded to the parties.
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A description in an application that would have anticipated the subject matter of a count is called a constructive reduction-to-practice of the count. One disclosed embodiment is enough to have anticipated the subject matter of the count. If the application is relying on a chain of benefit disclosures under any of pre-AIA 35 U.S.C. 119, 120, 121 and 35 U.S.C. 365, then the anticipating disclosure must be continuously disclosed through the entire benefit chain or no benefit may be accorded. See Tas v. Beachy, 626 Fed. App'x. 999, 1002 (Fed. Cir. 2015) (nonprecedential) (when a party to an interference seeks the benefit of an earlier-filed U.S. patent application, the earlier application must contain a written description of the subject matter of the interference Count, and must meet the enablement requirement.); Hyatt v. Boone, 146 F.3d 1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998).
If the application has an earlier constructive reduction-to-practice than the apparent earliest constructive reduction-to-practice of the other application or patent, then the applicant may simply explain its entitlement to its earlier constructive reduction-to-practice. Otherwise, the applicant must (A) antedate the earliest constructive reduction-to-practice of the other application or patent, (B) demonstrate why the other application or patent is not entitled to its apparent earliest constructive reduction-to-practice, or (C) provide some other reason why the applicant should be considered the prior inventor.
The showing of priority may look similar to showings under 37 CFR 1.130 -1.132, although there are differences particularly in the scope of what must be shown. In any case, with the exception discussed below, the examiner is not responsible for examining the substantive sufficiency of the showing.
I. REJECTION UNDER PRE-AIA 35 U.S.C. 102(a) or 102(e)
If an application claim is subject to a rejection under pre-AIA 35 U.S.C. 102(a) or 102(e) and the applicant files a suggestion under 37 CFR 41.202(a) rather than a declaration under 37 CFR 1.130 -1.132, then the examiner must review the suggestion to verify that the applicant’s showing, taken at face value, is sufficient to overcome the rejection. If the examiner determines that the showing is not sufficient, then the examination is not completed, and in accordance with 37 CFR 41.102, the rejection should be maintained and the suggestion should not be referred to the Board for an interference.
II. COMPLIANCE WITH PRE-AIA 35 U.S.C. 135(b)
35 U.S.C. 135 (pre-AIA) Interferences.
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- (b)(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.
- (2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.
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If an application claim interferes with a claim of a patent, and the claim was added to the application by an amendment filed more than one year after issuance of the patent, or the application was not filed until more than one year after issuance of the patent (but the patent is not a statutory bar), then under the provisions of pre-AIA 35 U.S.C. 135(b)(1), an interference will not be declared unless at least one of the claims which were in the application, or in a parent application, prior to expiration of the one-year period was for "substantially the same subject matter" as at least one of the claims of the patent. When the requisite relationship between post- and pre-critical date claims is otherwise established, the condition of pre-AIA 35 U.S.C. 135(b)(1) is met and there is no requirement of diligent prosecution. See In re Commonwealth Scientific, 632 Fed. App'x. 1024, 1026 (Fed. Cir. 2015) (nonprecedential) ("Application of § 135(b)(1) does not turn on the patent applicant’s prosecution decisions or require diligence in prosecution."). Note that the expression "prior to one year from the date on which the patent was granted" in 35 U.S.C. 135(b) includes the one-year anniversary date of the issuance of a patent. See Switzer v. Sockman, 333 F.2d 935, 142 USPQ 226 (CCPA 1964).
Similarly, in a subsequently filed application relative to an application published under 35 U.S.C. 122(b), if applicant does not appear to have a claim that is for "substantially the same subject matter" prior to one year after publication, in accordance with 35 U.S.C. 135(b)(2), an interference will not be declared. See Loughlin v. Ling, 684 F.3d 1289, 1294, 103 USPQ2d 1413, 1417 (Fed. Cir. 2012)("an application filed" in § 135(b)(2) includes the benefit provision of §120 ).
The obviousness test is not the standard for determining whether the subject matter is the same or substantially the same. Rather the determination turns on the presence or absence of a different material limitation in the claim. These tests are distinctly different. The analysis focuses on the interfering claim to determine whether all material limitations of the interfering claim necessarily occur in a prior claim. See In re Berger, 279 F.3d 975, 61 USPQ2d 1523 (Fed. Cir. 2002). If none of the claims which were present in the application, or in a parent application, prior to expiration of the one-year period meets the "substantially the same subject matter" test, the interfering claim should be rejected under pre-AIA 35 U.S.C. 135(b). See In re McGrew, 120 F.3d 1236, 43 USPQ2d 1632 (Fed. Cir. 1997).
Form paragraph 23.14 may be used to reject a claim as not being made prior to one year of the patent issue date. Form paragraph 23.14.01 may be used to reject a claim as not being made prior to one year from the application publication date.
¶ 23.14 Claims Not Copied Within One Year of Patent Issue Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(1) as not being made prior to one year from the date on which U.S. Patent No. [2] was granted. See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
¶ 23.14.01 Claims Not Copied Within One Year Of Application Publication Date
Claim [l] rejected under pre-AIA 35 U.S.C. 135(b)(2) as not being made prior to one year from the date on which [2] was published under 35 U.S.C. 122(b). See In re McGrew, 120 F.3d 1236, 1238, 43 USPQ2d 1632, 1635 (Fed. Cir. 1997) where the Court held that pre-AIA 35 U.S.C. 135(b) may be used as a basis for ex parte rejections.
Examiner Note:
1. In bracket 2, insert the publication number of the published application.
2. This form paragraph should only be used if the application being examined was filed after the publication date of the published application.
2304.02(d) Adequate Written Description [R-08.2017]
37 C.F.R. 41.201 Definitions.
- In addition to the definitions in §§ 41.2 and 41.100, the following definitions apply to proceedings under this subpart:
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Threshold issue means an issue that, if resolved in favor of the movant, would deprive the opponent of standing in the interference. Threshold issues may include:
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(2)
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- (ii) Unpatentability for lack of written description under 35 U.S.C. 112 of an involved application claim where the applicant suggested, or could have suggested, an interference under § 41.202(a).
37 C.F.R. 41.202 Suggesting an interference.
- (a) Applicant. An applicant, including a reissue applicant, may suggest an interference with another application or a patent. The suggestion must:
- *****
- (5) If a claim has been added or amended to provoke an interference, provide a claim chart showing the written description for each claim in the applicant’s specification, and
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An applicant is not entitled to an interference simply because applicant wants one. The interfering claim must be allowable, particularly with respect to the written description supporting the interfering claim. However, the written description requirement does not demand, as a matter of law, actual examples or an actual reduction to practice. The written description requirement is met so long as the application or priority application sufficiently described the subject matter to a person skilled in the art. See Tas v. Beachy, 626 Fed. App'x. 999, 1005 (Fed. Cir. 2015) (nonprecedential).
Historically, an applicant provoked an interference by copying a claim from its opponent. The problem this practice created was that differences in the underlying disclosures might leave the claim allowable to one party, but not to the other; or despite identical claim language differences in the disclosures might require that the claims be construed differently.
Rather than copy a claim verbatim, the better practice is to add (or amend to create) a fully supported claim and then explain why, despite any apparent differences, the claims define the same invention. See 37 CFR 41.203(a). The problem of inadequate written description in claims added or amended to provoke an interference is so great that the issue has been singled out for heightened scrutiny early in the course of an interference. See 37 CFR 41.201, under "Threshold issue." When an applicant copies a claim from another application or patent, the applicant’s claims are construed in view of the originating specification when the other party challenges the sufficiency of written description support. See Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375, 91 USPQ2d 1161, 1167 (Fed. Cir. 2009) (when a party challenges written description support for a copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language).