By Donald Zuhn --
Today, the Federal Circuit affirmed a decision by the Board of Patent Appeals and Interferences holding that claim 24 of Appellants' application, which was involved in an interference with Appellees' patent, was barred under 35 U.S.C. § 135(b)(1). That section states that:
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.
Appellants John Robert Adair, Diljeet Singh Athwal, and John Spencer Emtage filed U.S. Application No. 11/284,261 on November 21, 2005, along with a preliminary amendment requesting an interference based on U.S. Patent No. 6,407,213, which was issued to Appellees Paul J. Carter and Leonard G. Presta on June 18, 2002. The Board declared an interference, identifying claims 30, 31, 60, 62, 63, 66, 67, 70, 73, 77-81 of Appellees' '213 patent and claim 24 of Appellants' '261 application to be involved in the count.
Claim 24 of the '261 application recites:
24. A humanised antibody comprising a heavy chain variable domain comprising non-human complementarity determining region amino acid residues which bind an antigen and a human framework region wherein said framework region comprises a non-human amino acid substitution at a residue selected from the group consisting of 23, 24, 49, 71, 73, and 78, and combinations thereof, as numbered according to Kabat.
Claim 66 of the '213 patent, which is representative of the claims in the count, recites:
66. A humanized antibody heavy chain variable domain comprising non-human Complementarity Determining Region (CDR) amino acid residues which bind antigen incorporated into a human antibody variable domain, and further comprising a Framework Region (FR) amino acid substitution at a site selected from the group consisting of: 24H, 73H, 76H, 78H, and 93H, utilizing the numbering system set forth in Kabat.
Because claim 24 was not presented to the USPTO prior to June 18, 2003 (i.e., one year from the date on which the '213 patent issued) -- the critical date -- Appellants attempted to rely on claims 1 and 16 of their International application and corresponding national stage application, which were presented prior to the critical date, and which Appellants' contended provided pre-critical date support for claim 24 of the '261 application. Appellants' claims 1 and 16 recite:
1. A CDR-grafted antibody heavy chain having a variable region domain comprising acceptor framework and donor antigen binding regions wherein the framework comprises donor residues at at least one of positions 6, 23 and/or 24, 48 and/or 49, 71 and/or 73, 75 and/or 76 and/or 78 and 88 and/or 91.
16. A CDR-grafted antibody heavy or light chain or molecule according to any one of the preceding claims comprising human acceptor residues and non-human donor residues.
In response to rejections of claims 1 and 16 during national stage under §§ 101, 102(b), 103, and 112, first and second paragraphs, Appellants cancelled those claims.
The Board rejected Appellants' argument that claims 1 and 16 provided pre-critical date support for claim 24, determining in part that Appellants added limitations to overcome the rejection of those claims during national stage, and as a result, material differences presumptively existed between claim 24 (the post-critical date claim) and claims 1 and 16 (the pre-critical date claims).
On appeal, Appellants argued that the Board erred by failing to assess material differences in view of the claim being copied from Appellees' patent. Appellees countered that the question of whether there is a sufficient degree of identity between pre- and post-critical date claims for compliance with § 135(b) is an inquiry that is distinct and independent from any comparison with the patent claims copied. In siding with the Appellees, the Federal Circuit cited Corbett v. Chisholm, 568 F.2d 759 (CCPA 1977), stating that:
In Corbett . . . this court compared the "copied claim" with the pre-critical date claims and affirmed the Board's finding that material differences precluded Corbett from relying on any of the pre-critical date claims to overcome the § 135(b) bar. Id. at 765-66. In identifying certain limitations of Chisholm patent claim 1 as "material," the court was simply noting the material differences that existed between that claim as copied by Corbett after the critical date and those pre-critical date claims Corbett was relying on to overcome the § 135(b) bar. The court did not establish any rule requiring some sort of threshold assessment of which limitations of the copied patent claim are material before determining whether material differences exist between post- and pre-critical date claims.
Pointing to In re Berger, 279 F.3d 975 (Fed. Cir. 2002), the opinion noted that:
[T]he court in Berger referenced the issued Muller patent claim 1 only because the post-critical date claim, claim 7, was a direct copy of the patent claim. Id. at 981-83. This court affirmed the Board's analysis based only on the material differences between the post- and pre-critical date claims. Id. at 983 ("Because Berger's original claims 1-6 [the pre-critical date claims] do not include a material limitation of Berger claim 7 [the post-critical date claim], copied claim 7 is not entitled to the earlier effective date of those original claims for purposes of satisfying § 135(b)." (emphasis added)).
The opinion also notes that in Regents of the University of California v. University of Iowa Research Foundation, 455 F.3d 1371 (Fed. Cir. 2006), "this court expressly approved an analysis of material differences based solely on a comparison of the post- and pre-critical date claims in order to obtain the benefit of the earlier filing date." Citing Corbett, Berger, and Regents, the Court therefore concluded that:
[T]o overcome a § 135(b) bar for a post-critical date claim, an applicant must show that such claim is not materially different from a pre-critical date claim present in the application or any predecessor thereto in order to obtain the benefit of the earlier filing date. Any claims filed within the critical period, whether or not later cancelled, may provide pre-critical date support for the later filed patent claim(s), so long as the pre-critical date claims are not materially different from the later filed claim(s).
Applying its holding to the instant interference, the panel determined that because the Board found material differences between claim 24 (the post-critical date claim) and claims 1 and 16 (the pre-critical date claims), and an assessment of claim 66 of Appellees' patent was not necessary, the Board did not err by failing to assess material differences in view of the claim being copied from Appellees' patent.
Appellants also argued that the Board erred by applying Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), in the context of an interference in order to conclude that a limitation added to a claim in response to a rejection that results in allowance is presumed to be necessary to patentability and therefore material. With respect to this argument, the panel again sided with Appellees, stating that:
When an applicant adds limitations in response to an examiner's rejection, and those limitations result in allowance, there exists a well established presumption that those limitations are necessary to patentability and thus material. See Festo, 535 U.S. at 734; Corbett, 568 F.2d at 765. This presumption applies with equal force in the interference context.
In determining that the Board did not err by applying Festo, the panel noted that:
[B]ecause [Appellants] cancelled claims 1 and 16 of the PCT Application in response to the examiner's rejections, and added limitations into what eventually became claim 24 of the '261 Application to secure allowance, the Board properly presumed material differences between [Appellants'] post- and pre-critical date claims.
The panel, therefore, affirmed the Board's decision that claim 24 of Appellants' application was barred under 35 U.S.C. § 135(b)(1).
Adair v. Carter (Fed. Cir. 2012)
Panel: Chief Judge Rader and Circuit Judges Linn and Moore
Opinion by Circuit Judge Linn
Comments