Federal Circuit Ducks Major Prior Art Analysis: Affirms Weird PTAB Prior Art Holding

by Dennis Crouch

Ariosa (Roche) v. Illumina (Fed. Cir. 2017)

Interesting decision here on two different fronts: Reviewability of Ex Parte Reexamination Termination Decision; and Priority Prior Art Date for Patent Applications.

The dispute focuses on Illumina’s U.S. Patent No. 7,955,794 and arose after the inventors left Ariosa to form competitor Illumina.

License Arbitration Clause Ineffective Because it Excluded Issues of Patent Scope

Ex parte Reexamination Termination and Appeal: While the inter partes review (IPR) was ongoing Ariosa/Roche filed a set of three ex parte reexamination requests and the PTO determined that they collectively raised 18 substantial new questions of patentability. However, after siding with the patentee in the IPR, the PTAB also terminated the three pending reexaminations – finding that Ariosa had delayed unreasonably in filing the reexam requests and that the petitions were duplicative of the IPR. This was apparently the first time that the PTAB had ever collaterally terminated an ex parte reexamination. (Remember here, that reexaminations are handled by examiners not by the Board).

On appeal, the Federal Circuit refused to engage on the merits of the dismissal – rather writing a one-sentence disclaimer of jurisdiction:

Because we lack jurisdiction to review the termination of the ex parte reexamination proceedings, we dismiss the appeal of the termination of those proceedings.

Wow. PTAB has the right decision here (I think), but I continue to struggle with the no-appeal result.  The argument for no right to appeal here is two-fold: (1) in an IPR only the final written decision can be appealable, and the decision here was separate from that paper; (2) A third-party has no right to appeal dismissal of an ex parte reexamination. What we don’t know is which of these (if either), the  Federal Circuit would adopt.

Priority Prior Art Date for Patent Applications: As mentioned above,  the PTAB sided with the patentee – holding that the primary reference “Fan” was not actually prior art.  Again, rather than explaining its decision, the court simply wrote ¨Fan was not prior art.”  This is better than a R.36 affirmance without opinion, but not by much.

Ariosa’s ‘794 patent is based upon an application filed in June 2002, but claims priority back to a September 2000 provisional patent application.  The reference at issue – Fan – is not a patent but instead U.S. Patent Publication No. 2002/0172946.  That application was published in November 2002, with a February 2001 filing date, and claims back to a provisional application filed February 2000.

Under PRE-AIA 102(e), a published US patent application counts as prior art as of its filing date.  The question in the case, though was figuring out whether it is proper to stretch the date back to the provisional filing.  The problem with the provisional: although it arguably teaches the Ariosa invention, it apparently does not fully support any of the claims pending in the Fan application as published.

For its holding, the PTAB relied upon a couple of major decisions:

  • In re Wertheim, 646 F.2d 527 (Cust. & Pat. App. 1981) (in a CIP situation, a child patent is given the prior art date of the parent filing only if the child’s claims were fully supported by the parent application).
  • Dynamic Drinkware, LLC. v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (extending Wertheim to provisional application situations – “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”).

Extending these cases, the PTAB here held that Fan did not count as prior art as of its provisional filing date since “the claims of the [published] application are [not] supported by the provisional.”  The PTAB goes well beyond the already problematic Dynamic Drinkware by placing such heavy legal merit on the claims in a published provisional application.  On appeal, however, rather than grappling with these issues, the Federal Circuit affirmed – holding simply that ¨Fan was not prior art.”

Federal Circuit Backtracks (A bit) on Prior Art Status of Provisional Applications and Gives us a Disturbing Result

= = = = =

In the AIA, Section 102(e) was replaced with Section 102(a)(2).  We still lack judicial guidance on what will count as the prior art date under 102(a)(2) when the purported prior art claims priority to a larger family of applications.   ¿Notably, are Wertheim and Dynamic Drinkware still good law?

Under the post-AIA provision, a US published application is prior art to a claimed invention if it “names another inventor and was effectively filed before the effective filing date of the claimed invention.” 35 USC 102(a)(2). When considering when the purported prior art was “effectively filed,” Section 102(d) explains that a court should focus on the subject-matter for-which the prior art is being used and any parent applications where the application is “entitled” to claim a right of priority or benefit.  The prior art date will be “the filing date of the earliest such application that describes the subject matter.”

In my mind, this statutory scheme rejects Wertheim, Dynamic Drinkware and also the PTAB analysis here — which collectively further require that the claims in the application being used as prior art be sufficiently supported by the priority document.

The major caveat to this analysis is that the 102(d)(2) specifically notes that the application must be “entitled” to the priority.  That entitlement requirement could be used as a hook for a holding that an application is only entitled to a priority claim if at least one claim is fully supported by the priority filing.

Guest Post by Eric Sutton: Do You Know What your Provisional Application Did Last Summer?

72 thoughts on “Federal Circuit Ducks Major Prior Art Analysis: Affirms Weird PTAB Prior Art Holding

  1. 11

    Shocking News! Gene admits in his own IPWatchdog blog that: “..patent owners are prevailing with respect to the survival of claims at a higher rate than previously seen. The study, conducted by law firm Fitzpatrick, Cella, Harper & Scinto, shows that the rate at which patent claims were found unpatentable in PTAB proceedings fell significantly in 2016. .. The study found that in every quarter of 2016, the reviewed final written decisions resulted in more than half of the claims originally challenged in IPR proceedings surviving.”

    1. 11.2

      It is NOT shocking, oh defender of the IPR – as you would have gathered if you had bothered to read through the entire article including the comments.

      This “easing back” is a direct result of the all those crying out against the IPR scheme and the upcoming Oil States case.

      Of course, given your propensity, that type of takeaway would necessarily be absent in your observations. Not only that, you would likely (and have done so) merely tossed sniping comments from the sidelines.

      But hey, “Shocking!



          Do you think that I am presenting a point of law?

          Silly Squirrel, legal discussions (apparently) are not for you. (homage to the the Trix Rabbit intended)


            My understanding is that the data is from 2016 and earlier, i.e. before Oil States cert grant (which was in June, 2017) and thus unlikely to be related to that case.

            But if you think it ties in with Oil States, I agree with OSitA, that a citation is needed to support that claim.


              Oil States timing (and the groundswell with it) was occurring in 2016. The case itself is now at the crest of the wave (having been heard at orals with the Supremes).

              Less a “cause” and more a “correlation.”


                The case itself is now at the crest of the wave

                I’m sure it looks that way from the basement.


  2. 10

    Party 2 is entitled to a patent to A, B and C because party 1 has abandoned that invention. Under pre-AIA, you have to invent first and not abandon the invention.

  3. 9

    There should be a simple rule: whither priority, follows prior art.

    We are no longer in a first to invent system. Who invented what first is irrelevant.

    1. 9.1


      Please review the linked threads – many of our discussion points were left unfinished by you, and I have this feeling that we may see a Merry Go Round effect on this thread.


          Please, Prof. Crouch, let Ned’s comments post. Ned’s comments are routinely the best part of these threads. The operation of the filter is always a nuisance, but doubly so when it holds up insightful comments, as Ned’s usually are.


            I am more than sure that the “Don’t-Allow-Dialogue-Count-Filter” was NOT the reason why Ned’s part of the discussion was lacking in the linked threads.

            That being said, the “Count-Filter” is a nuisance and does not even address the dingle biggest blight on these boards (Malcolm’s drive-by monologue rants).

    2. 9.2

      Ned, why must the requirement for whether or not one gets the filing date benefit of a parent application or provisional for at least one of ones OWN patent CLAIMS be the same requirement as that for an effective prior art date for part of the specification disclosure of a published application or patent of another that was also in its parent application or provisional?

      1. 9.2.1

        Paul, we no longer our in a first-to-invent world. We are in a first-to-file world. All prior art, save private commercial exploitation by the inventor, should be publicly available. This is the way the whole world operates. We should not try to be different.

        Thus published patent applications and published patents should not have a prior art date as of their effective filing dates – that is a legacy of the first to invent world. We should trash that whole concept as best we might.

        But we still have multiple inventors making the same disclosures at relatively the same time and potentially claiming the same invention. The way the Europeans handle this, indeed, the way everybody else handles this, is to give the earlier filing novelty defeating effect to later filed applications. This is not really “prior art” because prior art can be used for inventive step purposes. Limiting the effect to novelty defeating is essential to carry into effect a first-to-file system where only the first-to-file the disclosed invention may obtain the patent on it, and regardless of whether or not the named inventors invented the disclosed invention.

        However, the powers that be that gave us the AIA gave us a system which which is a hybrid system where applicants only get priority to their effective filing, but prior art is basically first-to-invent, where the first inventor to file a disclosure of an invention that is later published basically blocks all others from obtaining a patent either on the invention or on anything which is an obvious variation.

        But I would limit the prior art effect of a patent or publish application exactly the way the Europeans do it – novelty defeating only.


          I support Ned’s suggestion here. Away from the USA, the filters of novelty and obviousness perform two different and complementary purposes.

          The obviousness filter is there to stop applicants getting patents that block the road along which technology is advancing anyway.

          The novelty filter is to ensure that the patent goes to nobody else but the one who was first to arrive at the PTO with an enabling disclosure of that which is new.

          The AIA uses secret prior art for obviousness attacks simply because that’s how patentability has always been done under the predecessor USA FtInvent law. The law makers were not persuaded to change. Big Corp Bulk Filers were happy to leave that old US patentability filter undisturbed, because it works to their advantage. Better get used to it Ned, eh?

          I must say that, under the AIA, this whole “priority” thing is handled (thus far) in a way that is, for me, totally illogical and incomprehensible.


            I must say that, under the AIA, this whole “priority” thing is handled (thus far) in a way that is, for me, totally illogical and incomprehensible.

            We (the royal “We”) are well aware of your Euro-glasses tendencies to not understand (and thus denigrate) what other Sovereign’s have chosen to do.

            Your failure to understand does NOT make the system here “illogical” or “incomprehensible.”

            This though is entirely a “you” issue.

  4. 8

    Could the terminations of the three ex parte reexamination requests [due to the IPR decision] have been avoided by the patent owner adding new claims in those reexaminations?

  5. 7

    BTW, the linked earlier threads have some excellent (albeit unfinished – hint: Ned) conversations contained therein!

  6. 6

    Totally off topic, but as if to thumb their noses at Prof. Crouch, every Rule 36 judgment that the CAFC released today was an appeal from the PTO.

  7. 5

    A quote from the earlier linked column:

    Anyone who works with prior art knows that this setup is an oddball way to addres the situation. A patent’s disclosure for prior art purposes should not depend upon what was claimed or not but instead should focus on what was disclosed. My belief is that, once publicly available, all provisional applications should be considered prior art as of their filing dates.

    I think an issue may be whether or not a mere filing should be deemed “prior art” in the legal sense.

    Yes, patents as prior art are deemed “enabling” even for 103 purposes.
    This is in part because the grant of a patent is “respected” as having been vetted to be a legitimate item. Of course, this supposition is the mirror side of the “Clear and Convincing” level of presumption of validity that the grant bestows.

    Before that grant, “support” is searched for.


    Because the (unstated, at least by others) basic reason is that science fiction – no matter when published – is not prior art.

    So I would amend the statement provided (here, and in my post below) in that “de facto” prior art dating is possibly not something that should be desired. Proper support should (still) be a requirement. As it is, since provisionals are NEVER examined, granting them a “de facto” prior art date may in fact BE tantamount to allowing science fiction to be deemed prior art.

    1. 5.1

      I do not strongly disagree with this, but this is a very radical suggestion. Everything you just argued would apply with equal force to pre-grant publications as it applies to provisionals.

      Incidentally, the argument you make as to why granted patents should be treated as art elides over an important distinction. The claims of granted patents are examined for enablement, but the disclosures of granted patents are not. That is to say, if a patent discloses two inventions, but only claims one, then the examiner will have scrutinized the enablement of the claimed invention, but not of the invention that is merely disclosed, but then left unclaimed. Are you suggesting that the disclosures relating to the claimed invention should be presumed enabling, but that the disclosures relating to the unclaimed invention should not be thusly presumed?

      That would be (once again) a rather radical departure from long standing and current practice. I do not necessarily disagree with your line of thinking here, but in a legal system run on the basis of precedent, I am a bit nervous about so thoroughly upsetting long standing practice in the way that your argument would, if taken to its logical conclusion.

      1. 5.1.1

        Thinking about this but for even a brief moment, I would say that applying this with equal force to a pre-grant publication would be a good and proper thing.

        You do however bring up an excellent point with the non-claimed inventions that may end up being dedicated to the public.

        I would posit then that any item of disclosure should be “determined” to have proper support. Claimed items would naturally still carry the determination already made (note, that even post grant, up to the two year mark for broadening re-openings, there is NO “de facto” allowance of the new claims, but those new claims are every bit as vetted as the prior granted claims).

        I am curious as to what would be upsetting to you with the logical conclusion that my argument provides. Other than “change,” do you see an issue with the argument or its logical conclusions?


          [W]hat would be upsetting to you with the logical conclusion that my argument provides.

          “Upsetting” is the wrong word. I am actually a bit enticed by the idea that you are suggesting. What it amounts to, however, is doing away with the presumption that prior art is enabling art.

          Right now (and for many years by now), prior art is presumed enabling. If the patentee (or applicant) thinks that the cited art is not enabling, the patentee has the burden to show as much.

          You are suggesting that granted patents should be (at least partially) presumed enabling as a corollary to the legal supposition that the PTO did its job competently when it scrutinized enablement during prosecution. I suppose, by the same logic, peer-reviewed NPL references could also be presumed enabled. The flip-side of this, however, is that unexamined patent publications (including “laid open” provisionals) should be accorded no presumption of validity, and it should fall as a burden on the patent challenger (be it the Examiner or the litigation defendant) to establish the cited art’s enablement before the art can be asserted against the claim.

          My only qualm here is that this is not how we have ever done it here in the U.S. In fact, I am not aware of any major jurisdiction that approaches novelty/obviousness with anything other than a presumption that the prior art is enabling. It worries me (just a little) to do something that we have never done and no one else anywhere either does or has ever done. Maybe this would be an improvement in practice, but I guess I would like to have more than a theoretical basis to suppose that this arrangement would work out well.


            What it amounts to, however, is doing away with the presumption that prior art is enabling art.

            No, not entirely.

            It actually merely “polices” the boundary between science fiction and proper prior art a bit better.

            . I suppose, by the same logic, peer-reviewed NPL references could also be presumed enabled

            No, because peer review is NOT a function of the examination process. One only has to look at academia and MUCH of what passes as “peer review” there to see that such should not (cannot?) carry the same legal effect. Granted, there may be (meaningful) differences for technical peer review, but the label itself is simply too broad.

            with anything other than a presumption that the prior art is enabling.

            I would invite you to take a closer look at the decisions for such. As you do, note that nowhere is there any ‘permission’ to allow science fiction to be prior art – for any purpose.

            Yes, the 103 review needs to be carefully reviewed – as that is where there is some ‘looseness’ in language that has led people down the wrong path in thinking that science fiction “counts” for 103 purposes. It never has – and for good and proper reasons.


              No, not entirely.

              Correct, not entirely. My point is just that no jurisdiction that I know of has ever abrogated the presumption of enablement even partially, as you propose to do.

              This might be a good thing. It would force people to explain their arguments for obviousness more completely and more clearly if they had to explain why one should expect X, Y, or Z to work in view of the cited disclosures. Lord knows that obviousness law would benefit if arguments for obviousness were forcibly made to be more clear and explicit.

              In other words, I am not disagreeing with your suggestion too vigorously. I am just nervous to be the first one to try something really different than has ever been done before. I would like to see some real-world evidence that it works well.


              One only has to look at academia and MUCH of what passes as “peer review” there to see that such should not (cannot?) carry the same legal effect.

              And patents are better?


    2. 5.2

      “Because the (unstated, at least by others) basic reason is that science fiction – no matter when published – is not prior art.”

      Why not?

      If the claim is to say:

      A robot, the robot comprising:
      at least one processor configured to:
      observe an physical area of interest including at least one of:
      listen to conversations in the area of interest;
      sense motion in the area of interest;
      monitor temperature and temperature trends in the area of interest;
      identify entities in the area of interest;
      monitor wind speed and direction and trends thereof in the area of interest;
      wherein if any one or combination of the observations indicate a threat, the at least one processor is configured to control arms of the robot to flail about and and control an audio output device of the robot to announce “Danger, DANGER, Will Robinson.”

      Why wouldn’t Lost In Space be prior art? What part of that claim is not enabled?

      1. 5.2.1

        Why not?

        Easy: science fiction is: fiction.

        There may well be elements in science fiction that are not fiction (in order to provide a better sense of “believability.”) HOWEVER, any such items are rightfully referenced by their respective actual non-fictional references and NOT the science fiction work itself.

        Your question about “which part is not enabled” goes to the underlying non-fictional components, THOSE would be your proper references.


          Why not?

          Easy: science fiction is: fiction.


          There’s more science in most “science fiction” than in your typical glibertarian fanzine, you obnoxious little pr ck.

  8. 4

    The major caveat to this analysis is that the 102(d)(2) specifically notes that the application must be “entitled” to the priority.

    “Major caveat” is rather an understatement here. Everything written previous to this sentence is just so much hand-waving, because the entitlement to priority is the decisive point of the §102(d) analysis, and there is really no reason to suppose that the CAFC will not carry over its Wertheim jurisprudence in determining “entitlement” under the AIA law.

    1. 4.1

      Greg, the statute does not read “entitled to priority.” Rather it reads, “entitled to claim a right to a priority … or the benefit of an earlier filing date.

      Radically different, and my view.

      But then again the Federal Circuit’s much into ignoring the words of the statute to further its position. In all its holdings regarding the non-appealability of institution issues under 35 U.S.C. 3 4(d), the Federal Circuit refused actually quote the words of the statute which limited the non-appealability to institution decisions made under this “section,” while a decision to institute was clearly to be made under this “chapter” according to 314(b).


          Anon, well it is very true that the courts have ignored the distinction and basically ignored the statute itself. The courts have provided a construction of the statute which is inconsistent with wording of the statute.


            very true that the courts have ignored the distinction and basically ignored the statute itself.

            Your attempted distinction is a difference without meaning – there is nothing “here” for the courts to ignore.

            As I indicated, your Chapter/Section attempted distinction has never carried a point Ned.

  9. 3

    ¿Notably, are Wertheim and Dynamic Drinkware still good law?

    Are you trying to introduce the Spanish initial question mark into English language punctuation? If so, I applaud your effort (it is useful to the reader to know at the beginning of the sentence that what follows is a question), but I think that you face rather an uphill battle here.

    The PTAB goes well beyond the already problematic Dynamic Drinkware by placing such heavy legal merit on the claims in a published provisional application.

    I can agree that this case extends Dynamic Drinkware, but it seems a bit of an exaggeration to say that it extends “well beyond” Dynamic Drinkware. If, as Dynamic Drinkware held, the non-provisional claims must be supported in the provisional before the provisional has prior art effect, then—when the document relied upon to make the §102(e) rejection is a published pre-grant application—it follows that the claims of that published pre-grant must be supported in the provisional.

    This does not really push the Dynamic Drinkware holding into a new level of strangeness (although, I confess that I considered DD kind of strange when I first read it). It simply takes a straightforward reading of DD and applies it in the exactly analogous manner to the other category of documents (pre-grant pubs) listed in §102(e).

    1. 3.1

      I am wondering if the strangeness expressed has to do with particular claims finding support, or if ANY claims found support.

      If it comes down to particular claims, then you may find yourself in the “odd” situation that a “laid-open” and connected provisional application may in fact teach something to the legal fiction of a PHOSITA based solely on whether a non-PHOSITA made a directly on point claim (as opposed to say, any claim that ‘opens the door’).

      One possible fallout to this would be whether or not the family of applications is “alive” and amenable to an amendment introducing just such a claim – claiming priority all the way back to the ‘opened’ provisional***.

      However, given that provisionals are typically not “opened,” their treatment as to being “prior art” or not needs to be carefully scrutinized. It may very well be the case that MANY “unopened” provisional applications would drastically change the picture for that legal fiction of a PHOSITA. This fact should be understood as part and parcel of the Quid Pro Quo bargain intended to entice people to share in the first place.

      I guess the issue becomes one of a Pandora’s box. If a provisional is opened – and opened properly for any reason, does ALL of what is in that box become “open?” OR, is it a case where “openness” is selective to the subject matter of the item that is attempting to reach back to the provisional (and whether or not the ‘right’ subject matter has been presented).

      I would lean towards a more permissive view. I would lean towards the view that if any claim (even a claim not at suit) provides a gateway to the earlier document, then that document has become open – and open for all that it holds. In reality, it is not as if a provisional document is ever “partially” allowed to be seen in a “published” image file wrapper link.

      ***I am struck by the assertion that the provisional would support a claim that is directly on point, had such a claim been present in the asserted prior art.

      1. 3.1.1

        I am wondering if the strangeness expressed has to do with particular claims finding support, or if ANY claims found support.

        Yeah, I think that is exactly the locus of the “strangeness.” It it odd to suppose that a claimed invention can be disclosed in a “laid open” provisional, and yet the disclosure does not negate patentability of a later filed application.

        Imagine the following:

        Party 1 invents a device composed of A, B, & C on 1 Jan 2010. Party files a provisional on 1 Feb 2010 claiming “A device having components A, B, & C.”

        Party 2 invents the same device on 10 Feb 2010. Party 2 files a non-provisional on 1 Mar 2010 claiming “A device having components A, B, & C.”

        Party 1, in its intervening year, discovers that the device is even better with component D, so the non-provisional filed on 1 Feb 2011 claims “A device having components A, B, C, & D,” because the management at Party 1’s employer thinks that the A/B/C/D embodiment is the only one with any commercial potential, so why waste a claim on A/B/C.

        The strange effect here is that Party 1 clearly invented before Party 2, which under the pre-AIA law should decisively negate patentability for Party 2. It is not at all clear, however, that this is the outcome that will actually obtain. If party 1 wants, it can always amend to claim the A/B/C embodiment, and then its provisional will become effective art against Party 2’s application, but until it does, the patent goes to Party 2. I cannot see any good policy reason for this outcome to obtain, but that is the law right now.


          Party 1 has invented A, B and C, but its behavior indicated that it has abandoned the invention consisting of A, B and C.


            That seems a stretch to me. “[I]ntent to abandon an invention will not be imputed, and every reasonable doubt should be resolved in favor of the inventor.” Ex parte Dunne, 20 U.S.P.Q.2d 1479, 1480 (B.P.A.I. 1991). If we are resolving every doubt in favor of Party 1, it seems unlikely to me that there is enough here to sustain a conclusion of abandonment.


              especially if the application family is alive and the applicant still has the ability to draft a claim to the item.


                I totally agree with you anon. If an application with a claim to A, B and C is actually filed by party 1, then the invention was not abandoned. And by the way, the provisional filed by party 1 then becomes prior art to the application filed by party 2, and the claims in the application of party 2 become anticipated. The rule in Dynamic Drinkware is self-consistent.


          Lots of things that may in fact be “clearly done” in provisionals simply do not count as prior art.

          Even – in fact – for items that are well supported! ANY of those items can only become prior art if the applicant opens the lid to Pandora’s box by requesting that lid to be opened.

          Part of this stems back to the very Quid Pro Quo of the patent system itself and the (foundational) aspect that a good and strong patent system uses BOTH a carrot and stick approach.

          We have rather wandered away from the stick aspect (and the AIA’s Prior User Rights – as little as they seemed to have developed as they have – are a direct reflection on the attempted weakening of that ‘stick’ approach).

          Perhaps a tangent here, but this also touches upon the change in direction (by the AIA) of what “new” means. Seemingly, Congress (in the AIA) has decided for a new meaning to “new”: new to you is still new.

          It is indeed an odd conflux of promoting trade secrets within the AIA, but that is what Congress appears to have done.

          Circle back with this thought though to the PRE-forced publication days and the well understood notion of the Quid Pro Quo. If at any time (in those olden golden days) prosecution was running into snags, one could safely abandon and maintain the shared item as trade secret material.

          Of course, even before the AIA the bargain was weakened. We have merely seen more of the weakening over time.

          On a separate note, would your hypo permit the use of A/B/C/D to serve as some type of ‘inverse’ obviousness of A/B/C, or would there be a “hint” of teaching away by NOT pursuing that combination?


          good example, Greg. of course this is the pre-aia law, which I think is flawed and your example does a good job of pointing out the flaws.

          While Dennis implies that the current law still isn’t completely clear, I think the current statute is very clear. The new approach adopts the european approach in which common subject matter (not necessarily claimed) will go back to earlier applications. So under the post-aia approach, yes party 1’s provisional would block party 2.


            once more caveat Greg, if party 1 actually built a prototype, then their prototype would indeed count as prior art to party 2 under the old 102(g). I’m assuming in your example no such prototype was built.


              I do not see how the prototype makes a difference in the patent office. Because Party 1 claims A/B/C/D, while Party 2 claims A/B/C, there will not be an interference declared. That is to say, the PTO has no way of knowing that Party 1 built a prototype, and no mechanism to find out.

              In other words, the PTO has in front of it undeniable evidence that Party 1 invented first, but it has no legal basis to deny to Party 2 the patent that it knows Party 2 should not get.

              You are correct that if some Party 3 (or even Party 1) should later want to challenge Party 2’s patent under the old §102(g)(2), the prototype (or even the “laid open” provisional) could be adduced in court as evidence against validity. It just seems strange to me that we should force the issue to go to court, when it should be 100% clear to the PTO that Party 2 should never get the patent in the first place.


                Party 2 is entitled to a patent to A, B and C because party 1 has abandoned that invention.
                Under pre-AIA, you have to invent first and not abandon the invention. The behavior of party 1 indicates it has abandoned the invention consisting of A, B and C. Therefore, party 1 is not entitled to a patent on A, B, and C.
                Party 2 is entitled to a patent to A, B and C because party 2 is the first inventor that does not abandon its right to a patent on A, B and C.

                1. As I explained in above, I do not think that this is right. But, more to the point, your response really does not change the strangeness of the state of the law, which is my more substantive point. To illustrate this, please allow me to change my hypo a bit:

                  The examiner picks up Party 2’s application in 2011, sees no problem with it and passes it along to allowance. The examiner picks up Party 1’s application in 2012, sees no problem and passes it along to allowance, at which point Party 1 files a continuation claiming the A/B/C device and requests early publication on that continuation. Obviously, the filing of a continuation on the A/B/C device defeats an inference that Party 1 has abandoned this invention.

                  Only now does Party 1’s application become absolutely novelty destroying art against Party 2. The ensuing interference never progresses past the patentability stage, because it is clear that Party 2 (who has already had to pay issue fees to get their granted patent) can never make the count in view of Party 1’s provisional.

                  It is a strange legal arrangement that requires Party 2 to waste money on issue fees and for both parties to waste resources on an interference, when the PTO can know with serene certainty ex ante that Party 2 cannot be entitled to this patent.

                2. There is a 1 year time limit for exposing the patent of party 2 to an interference. But I agree that it could happen that the patent of party 2 may be found invalid because some prior art was not identified during prosecution.


            Patent leather, the U. S. system is not like the European system whatsoever because we use “applications” as of their effective filing dates for inventive step purposes and they do not. While they use the whole contents of priority documents, it is only for novelty purposes.


              Elsewhere, MaxDrei’s “Euro-glasses” have been in sync with your tendency to want to adopt a non-US Sovereign legal viewpoint.

              Funny thing about that though (as reflected in the hyperlinks to past conversations) – MaxDrei cannot defend that desired difference when it comes to applying obviousness in the eyes of PHOSITA (a legal fiction) as opposed to applying it to any real person of an actual inventor. In other words, his “logic” breaks down in application of what that legal test is meant to convey (state of art – and NOT what any one inventor may or may not know). As “odd” or as “inconceivable” as it may be, applying the notion of 103 to develop a state of art for the legal fiction of a PHOSITA actually aligns better with the US approach.


                It ain’t “my” logic anon. It is the logic of the whole world outside the USA.

                And it doesn’t “break down” in any of the courts of the First to File world outside the USA.

                And I have no difficulty to defend it.

                And, from the linked threads, anybody with “a mind willing to understand”, anybody who is trying to “get it” can see all that.

                1. Except that anybody can also see – in the prior discussions – that YOU in fact do not engage the points put to YOU.

                  Trying to spin this as some type of “not me but ROW” does not work.

  10. 2

    I always looked to MPEP 2135.03(III):
    The pre-AIA 35 U.S.C. 102(e) critical reference date of a U.S. patent or U.S. application publications and certain international application publications entitled to the benefit of the filing date of a provisional application under 35 U.S.C. 119(e) is the filing date of the provisional application with certain exceptions if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C 112(a)/ pre-AIA 35 U.S.C. 112, first paragraph.

    The way I’ve read this is that if the subject matter being relied upon to make the rejection is disclosed in the provisional (pursuant to 35 USC 112, 1st paragraph), then you can make the rejection. Otherwise, you cannot. In essence, make the rejection based upon what is in the provisional — not what is within the application/patent that is relying upon the provisional.

    This is, to me, a common sense description of what is PRIOR art. The provisional is prior art — not the application that claims priority to the provisional.

    1. 2.1

      if the provisional application(s) properly supports the subject matter relied upon to make the rejection in compliance with 35 U.S.C 112(a)/ pre-AIA 35 U.S.C. 112, first paragraph.

      since the provisional is supporting the subject matter relied upon – it is NOT the subject matter relied upon itself.

      Your common sense here is in error.

  11. 1

    Are you missing some wording in this:

    Extending these cases, the PTAB here held that Fan did not count as prior art as of its provisional filing date since “the claims of the [published] application are [not] supported by the provisional.” The PTAB goes well beyond the already problematic Dynamic Drinkware by placing such heavy legal merit on the claims in a published provisional application.

    The quoted material seems to me to be exactly the same as the ruling in Dynamic Drinkware.

    Maybe it should be “the claims of the [published] application are [not] supported by the [claims in the] provisional”?

    And why is Dynamic Drinkware “problematic”? Their reasoning seemed fairly sound.

    1. 1.1


      The relevant issue is whether the claims of the later-filed application/patent are supported in the disclosure of the provisional. If so, the later-filed application/patent is entitled to the filing date of the provisional, and thus has an earlier effective priority date (thus rendering it prior art to any subsequent application with an effective priority date after the filing date of the provisional).

      Dynamic Drinkware seems like a strange result because it means that the question of whether disclosure from a provisional is available as prior art turns on the scope of the eventual CLAIMS of an issued patent. This is perhaps even weirder in the context of a published application, as the application could have included any claims on publication. It seems strange that the publication would have different prior art dates for the exact same disclosure based simply on whether a claim is supported in the provisional.

      Additional context reposted from an earlier post:

      The court in Dynamic Drinkware was relying on In re Wertheim (646 F.2d 527 (CCPA 1981)) for the proposition that “[a] reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (citing In re Wertheim, 646 F.2d 527, 537 (CCPA 1981)).

      This entire line of cases can be traced back to Milburn Co. v. Davis etc. Co., 270 U.S. 390 (1926). It’s not entirely clear that these holdings are completely in accord with the Court’s original emphasis that “[t]he fundamental rule we repeat is that the patentee must be the first inventor.” Wertheim didn’t put a lot of emphasis on this statement, instead arguing that Milburn was decided on the basis that a filed patent application would have issued earlier “but-for” patent office delays, and thus should be available as prior art.

      There appears to have at times been argued a contrary theory focused on whether disclosure is carried over from an earlier application into a later application that issues. See, e.g., In re Klesper, 397 F.2d 882 (CCPA 1968); Application of Wertheim, 397 F.2d 882 (CCPA 1968). This theory probably makes more intuitive sense to many practitioners, but is not as directly supported in recent case law at the moment.

      On the other hand, the court in Dynamic Drinkware made clear that “[b]ecause we refer to the pre-AIA version of § 102, we do not interpret here the AIA’s impact on Wertheim in newly designated § 102(d).” Dynamic Drinkware, F.3d at 1382. That being said, to the extent that Milburn was based “[t]he fundamental rule … that the patentee must be the first inventor”, it’s relevance under the AIA could be questioned.

      1. 1.1.1

        JCD, isn’t it odd that we have moved to a first-to-file system for determining applicant priority and yet retain a first-to-invent prior art system?


          As strange as you may think it – it was known wide (in Congress and in the public) that we were taking steps to ROW. It was not a goal of AIA to be truly and exactly the same as ROW.

          But the AIA was a mistake anyway – in OH so many ways.


          Ned, whatever the panel may have been drinking in Drinkware, under the AIA we have almost entirely a first to publicly disclose, or first to file, prior art system. Where is there left any “date of invention” in AIA 102?


            Paul, 102(e) was a first-to-invent feature of the prior system. It was retained and strengthened in the new scheme.

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