The continuity inquiry provides the backdrop for the incorporation by reference analysis. [We] have applied the person of ordinary skill standard in interferences when assessing priority under § 120, and see no reason to depart from that standard here.
On June 7, 2012, in Hollmer v. Harari, the U.S. Court of Appeals for the Federal Circuit (Prost,* Mayer, O'Malley) reversed and remanded the USPTO Board of Patent Appeals and Interferences decision awarding U.S. patent application Serial No. 09/310,880 (Harari) priority over U.S. Patent No. 5,828,601 (Hollmer) after finding that Harari's '880 application was entitled to the benefit of the filing date of Harari's U.S. patent application Serial No. 07/337,566, and thus preceded the date of conception for Hollmer's '601 patent. The patented technology related to multistate EEprom read and write circuits and techniques. The Federal Circuit stated:
An application in an interference is entitled to the filing date of an earlier-filed U.S. patent application if the earlier application "meet[s] the requirements of 35 U.S.C. § 120 and 35 U.S.C. § 112[, paragraph 1,] for the subject matter of the count." "[T]o gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112." Thus, if any application in the priority chain fails to make the requisite disclosure of subject matter, the later-filed application is not entitled to the benefit of the filing date of applications preceding the break in the priority chain. Whether the intervening patents in a chain of priority maintain the requisite continuity of disclosure is a question of law we review de novo. Here, Harari does not dispute that the intervening '838 and '768 applications must incorporate the '579 application for the '880 application to be entitled to the benefit of the filing date of the original '566 application. Whether and to what extent a patent incorporates material by reference also is a legal question we review de novo.
[W]hen an examiner is faced with an amendment clarifying ambiguous incorporation by reference language in an application that is "at the initial filing stage," the reasonable examiner standard applies for determining whether a document was properly incorporated. We contrasted this standard with the standard that generally applies to reviewing such incorporation statements: "[I]f we were determining the validity of an issued patent containing the disputed incorporation by reference statement . . . we would be concerned with whether one of ordinary skill in the art could identify the information incorporated." [T]he proper inquiry focused on the reasonable examiner, not the person of ordinary skill.
[Here, w]e address whether this reasonable examiner standard also applies for determining if the intermediary '838 and '768 applications sufficiently incorporate the '579 application by reference such that they satisfy § 120's continuity requirements. Hollmer argues that [the] reasonable examiner standard is limited to situations in which an applicant seeks to clarify an ambiguous incorporation statement through an amendment that triggers a potential 35 U.S.C. § 132 new matter problem. Where, as here, § 120 priority is at issue, Hollmer contends that the incorporation by reference inquiry takes place within the § 120 context, applying the person of ordinary skill standard. [W]e agree with Hollmer that the Board should have applied the person of ordinary skill standard in assessing the disputed language in the '838 and '768 applications.
[W]ith respect to the appropriate standard for assessing the incorporation statements, we disagree with Harari that [the] reasonable examiner standard applies whenever the identity of an incorporated document is at issue before the PTO. Questions surrounding incorporation by reference statements do not arise in isolation but instead generally manifest as an initial hurdle that first must be crossed before reaching an underlying issue. It is this underlying issue that provides the framework for resolving the incorporation by reference question. For example, when the ultimate question implicates the understanding of a person of ordinary skill, such as determining whether the written description requirement is satisfied, construing claims, or evaluating the teachings of a prior art reference, we have reviewed the incorporation statements from the person of ordinary skill vantage point. In assessing incorporation statements from this point of view, our cases have required that "the host document . . . identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents."
[W]e are not considering an amendment seeking to clarify the incorporation statements in the '838 and '768 applications. Instead, the issue before us is whether these intervening applications maintain continuity between the '566 and '880 applications by disclosing the '579 application. The continuity inquiry provides the backdrop for the incorporation by reference analysis. [We] have applied the person of ordinary skill standard in interferences when assessing priority under § 120, and see no reason to depart from that standard here. Moreover, § 120 requires that the disclosure actually appear within the specification and amendments in later applications cannot cure an otherwise defective application in the priority chain. The incorporation by reference analysis, therefore, is similarly constrained by the four corners of the application.
Applying the correct standard, we conclude that the disputed language in the '838 and '768 applications does not "identify with detailed particularity what specific material it incorporates" to a person of ordinary skill. Unlike the '566 application, neither the '838 application nor the '768 application was "filed on the same day" as, or "copending" with, the '579 application. At least two other applications by named inventors Mehrotra and Harari, however, were "copending" with the '838 application and had the same title as the '579 application: U.S. Patent Application Nos. 07/508,273 and 07/734,221. Thus, on its face, the incorporation language does not directly lead one of ordinary skill to the '579 application but rather presents several potential documents for incorporation. Such ambiguity in incorporation does not suffice. As we have previously cautioned, "[P]atent draftsmanship is an exacting art, and no less care is required in drafting an incorporation by reference statement than in any other aspect of a patent application." Without the incorporation of the '579 application in the '838 and '768 applications, the '880 application is not entitled to the benefit of the priority date of the '566 application.
[W]e reverse the Board's decision and remand for the Board to enter judgment that the effective filing date of the '880 application is December 20, 1996 -- the filing date of the '708 application -- and for further proceedings consistent with this opinion.
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