Patent appeals

If the patent appHcation is allowed based on an appHcant s response to the second office action, examination is ended. However, if the patent examiner advises the patent appHcant that the rejections will be maintained and the appHcant views these rejections as insurmountable, the patent appHcant may choose to abandon the patent appHcation. If the patent examiner maintains the earHer posed rejections, and the patent appHcant disagrees with the examiner, the patent appHcant may appeal the examiner s decision to the Board of Patent Appeals and Interferences, which is comprised of adininistrative judges. The appeal process involves the noticing and briefing of the appeal, and oral argument before and a subsequent decision from the Board of Appeals and Interferences (step 10). Usually the oral argument is presented to, and subsequent decision is received from, a panel of three administrative judges selected from the full complement of the Board. If the Board panel decides in the appHcant s favor (step 11), the patent appHcation will be passed to issuance (step 12). If the Board decides in the examiner s favor, the patent appHcant will have to consider whether to refile the appHcation and request another round of examination or seek court review. 

Depending on the circumstances, seemingly descriptive marks when taken as a whole might constitute only suggestive terms. A 1968 decision of the Court of Customs and Patent Appeals is illustrative. Sugar and Spice was held registrable for bakery goods. The court stated ... 

From a procedural standpoint, unfavorable patent decisions by USPTO examiners (e.g., rejected patent claims/applications) can be appealed to the U.S. Board of Patent Appeals and Interferences (the Board). If the outcome at the Board is unfavorable to the applicant then the applicant may appeal the decision to the Court of Appeals of the Federal Circuit (CAFC). Unfavorable decisions from the CAFC may be further appealed by petition for a writ of certiorari to the U.S. Supreme Court.6 While patent appeals from the Board to the CACF may be made as a matter of right, appeals from the CAFC to the Supreme Court are not. Due to the Supreme Court s broad jurisdiction and very limited capacity to hear cases, only a very small percent of cases that are appealed (approximately 1%) are heard (so good luck ).7 Patent litigation on the other hand involves the enforcement of patents that have already... 

C.C.P.A. = Court of Customs and Patent Appeals or published reports of its decisions, U.S. Government Patent Office, Washington, D. C. 

A statement of the Court of Customs and Patent Appeals in a recent case (9,38) is particularly significant ... 

Another type of rejection for obviousness is based upon a combination of references and disclosures in the prior art of compounds which might readily be converted to claimed compounds. In one instance (3), reversing the examiner and the board, the Court of Customs and Patent Appeals position was that such conversion would not be obvious in the absence of any suggestion in the prior art as to why it should be made.. . . The mere fact that it is possible to find two isolated disclosures which might be combined to produce a new compound does not necessarily render such production obvious unless the art also contains something to suggest the desirability of the proposed combination. ... 

A careful and objective analysis of recent decisions both in the review tribunals of the Patent Office and in the courts, and particularly in the Court of Customs and Patent Appeals, indicates that there is an ever-increasing awareness of the complex problems uniquely peculiar to the chemical and related arts. The judiciary before whom the majority of contested cases are brought on appeal have unusual sophistication and expertise in the highly complex technical areas embracing the broad spectrum of chemistry and the chemical sciences. There is encouraging evidence of growing recognition that the interim results of research may properly lay claim to patent protection. A realistic treatment of the utility question in chemical cases appears to be more the rule. 

This language says that the inventor must first of all have a conception or idea of a complete and operative invention. It does not mean that the invention, as it finally is made, has to conform in every respect with the conception. It may be modified to put it in better commercial form. The court which directly controls the Patent Office is called the Court of Customs and Patent Appeals (C.C.P.A.). This court has repeatedly referred to the quoted conception test. This court, however, has said that the language is modified (20) in that ... 

Court of Customs and Patent Appeals has perhaps liberalized the doctrine of the previous cases considerably, by holding It is manifestly impracticable for an applicant who discloses a generic invention, to give an example of every species falling within it, or even to name every such species. Further the court states It is sufficient if the disclosure teaches those skilled in the art what the invention is, and how to practise it. ... 

District of Columbia, in 1957, in the case of Isenstead v. Watson (8), setting forth that the Patent Office should be very careful, and perhaps even reluctant, to grant a patent on a new medical formula until it has been thoroughly tested and successfully tried by more than one physician. However, we find a rather different point of view expressed by the Court of Customs and Patent Appeals (10), which held ... 

The Court of Customs and Patent Appeals (33) has held .. . the applicant should claim his invention as a process, which is the only way a use can be claimed. ... 

It is sufficient to apply Section 100(b), above quoted, which, in effect, has abrogated the principle laid down in a series of cases to the effect that a new use of an old process or an old device is not patentable on that ground alone. What we are confronted with in the two process claims is not a new process, as such, but the application of a previously known chemical to an entirely new and different use, and making it a participant in the process. There do not seem to have been very many decisions construing the new provision to which reference has been made, but there are two cases decided by the Court of Customs and Patent Appeals in regard to the matter that appear to be pertinent. ... 

Several different approaches to claiming an invention were used in the prosecution of In re Riden and Flavin (38). The Court of Customs and Patent Appeals sustained the rejection of claims drawn to compounds and also of claims drawn to novel compositions containing these compounds. 

The particular compound itself was old. The Court of Customs and Patent Appeals reached the conclusion that patents should not be granted for old compositions. A comprehensive discussion involving In re Thuau and many other cases appear in an article by Ryan (39). This article cites among others, an article by Tashof (49). The conclusions reached by Mr. Tashof are out of date to the extent that now patents are granted on methods of treating the human body—Ex parte Scherer (43). 

With the blossoming of biotechnology in the 1980s and, more recently, of genomics, a whole new speciality in patent law has developed. In general, it is viewed that the principles of chemical patent practice apply equally to the biotechnology field. The Court of Appeals for the Federal Circuit (which is the U.S. Federal Court that hears all patent appeals from the Patent and Trademark Office and any Federal District Courts) has affirmed this in their decisions. Biotechnology inventions must satisfy the standard statutory... 

Guaranteed adjustment basis (GAB)l Patent and Trademark Office failure to take certain actions within 14 months from filing date and four months from other events Patent and Trademark Office must mail an examination notification (first Office action including Quayle action or notice of allowability, restriction requirement and request for information, but NOT OIPE notice of incompleteness of application or other such notices) to applicant within 14 months of the filing date Patent and Trademark Office must also respond within four months to the applicant s reply to an office action or applicant s opening appeal brief Patent and Trademark Office must act within four months of a board of patent appeals and interferences (BPAI) or court decision, where allowable claims remain in the application Patent and Trademark Office must issue the patent within four months of date on which the issue fee is paid, and all outstanding requirements are satisfied. 

If the applicant is not successful in overcoming the examiner s rejections and the examiner makes the rejections final, several options remain. Again the applicant may simply abandon the application and, if the application has not been and will not be published, retain the invention as a trade secret. Or, the applicant can refile the application as a divisional, continuation, or continuation-in-part application and continue prosecution in the PTO. The applicant may also appeal the examiner s rejection to the Board of Patent Appeals and Interferences within PTO. If not satisfied with the Board s decision, the applicant may appeal that decision either to the Court of Appeals for the Federal Circuit based on the record before the PTO or to a federal district court for a de novo review. If the examiner s position is overturned, the Federal Circuit or the district court can order the PTO to issue the patent. Appeal to either the Federal Circuit or a federal district court destroys the secrecy of the application as well as that of the record of the proceedings within the PTO and thus destroys any trade secrets that may have been contained therein. 

With the first-to-invent system in the United States, it is sometimes necessary to determine which of two or more inventors (or groups of inventors) first invented the subject matter that is claimed in common by the parties. Interferences are the proceedings within the PTO for making such determinations. These proceedings, which are overseen by senior examiners within the PTO, are ultimately decided by the Board of Patent Appeals and Interferences in the PTO. The party who first conceives an invention and first reduces it to practice will normally be awarded priority and will be awarded the U.S. patent (142). This is not the case, however, if another party, who reduced the invention to practice at a later date, can prove that he or she was the first to conceive the invention and proceeded diligently to reduce it to practice from a time before the other party s date of conception. The diligence of the first to reduce the invention to practice is normally immaterial in the priority contest. 

Iftheissuance of apatent is delayed because of appellate review by the Board of Patent Appeals and Interferences or by a federal court, and the appeal is successful, the patent term is extended for a period of the appeal (up to 5 years). The extension is reduced by any time attributable to appellate review before the expiration of 3 years from the filing date of the application and for the period of time the applicant did not act with "due diligence." 35... 

In the landmark case of Brenner v. Manson, 383 U.S. 519 (1966), the Supreme Court stated that a new process for making known steroids was unpatentable, when the patent application did not disclose any use for the steroids except in laboratories that might test them to find uses for them. The Court of Customs and Patent Appeals has applied this decision to the patentability of chemical intermediates, or starting materials, that produce intended products. In re Joly, 376 F.2d 906,153 U.S.P.Q. 243 (C.C.P.A. 1967) In re Kirk, 376 F.2d 936, 153 U.S.P.Q. 266 (C.C.P.A. 1967). The application for patents for new, nonobvious intermediates or processes must show that the re-... 

The Court of Customs and Patent Appeals has enunciated this doctrine despite the protests of some of its judges that there is a commercieil market for new chemical compovmds, intermediates and processes to test whether they have commercial uses. See In re Kirk, 376 F.2d 936, 947-68 (Rich, Smith, J.J., dissenting). Inventors or companies that want to market such new products to others for further investigation while keeping the products proprietary must rely on the law of trade secrets. Splitting work on a new product this way can lead to joint ownership of a patent that may ultimately issue on it between the person who first invented the compound or process and the person who found a use for it. 

Of interest is the decision of the US Supreme Court in the Manson case (383 US 519) which overruled the utility doctrine enunciated by the Court of Customs and Patent Appeals in the Nelson case (47 CCPA 1031) and which adjudicated the question of what constitutes utility in a chemical process. The invention involved a process for making certain steroids. The court held that the utility of the product must be established and that merely providing a product to be available for use testing by the trade was insufficient. In the decision, it was pointed out that... 

DONALD W. BANNER was Commissioner of Patents and Trademarks during 1978-79, and is now engaged in private practice. Prior to this appointment, he was general patent counsel for Borg-Warner Corporation. He has also served as President of the American Patent Law Association and the Association of Corporate Patent Counsel, was Adjunct Professor of Law at John Marshall Law School, and Chairman of the ABA Section on Patents, Trademarks and Copyright Law. He is admitted to practice in the U.S. Supreme Court, U.S. Court of Customs and Patent Appeals, the Supreme Court of Michigan, and the Supreme Court of Illinois. 

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