Fed. Cir.: Incorporation By Reference Valid When Information is "Ascertainable" By the Examiner

Harari v. Hollmer, No. 09-1406 (April19, 2010)

During an Interference proceeding, Harai was dismissed from the proceeding and the Board concluded that Harari’s claims were unpatentable for lack of written description due to an insufficient incorporation by reference statement.

The application in question stemmed from a series of 4 continuation filings, that also incorporated teachings from related applications.  The original application made reference to two different applications, one of which had a serial number assigned to it at the time, and a second one that didn't: 

Optimized erase implementations have been disclosed in two copending U.S. patent applications. They are copending U.S. patent applications, Serial No. 204,175, filed June 8, 1988, by Dr. Eliyahou Harari and one entitled “Multistate EEprom Read and Write Circuits and Techniques,” filed on the same day as the present application, by Sanjay Mehrotra and Dr. Eliyahou Harari. The disclosures of the two applications are hereby incorporated by reference.

The application at issue also included a transmittal sheet identifying the filing as a continuation application, a photocopy of the parent application as originally filed, a preliminary amendment revising the parent application, and a copy of the inventors’ declaration filed in the immediately preceding application.

In a preliminary amendent, the specification was changed to add the serial number and filing date and several paragraphs of text and drawing sheets, copied from the earlier application.  Additionally, new claims were added that were directed, at least in part, to the earlier material.  In the "Remarks" section of the amendment, te applicant explained the basis for the amendments.

The USPTO rejected the incorporation by reference, finding

[T]hat one could not tell from the original disclosure whether the incorporation language referred to an application filed on the same day as the [original] application, or on the same day as the [application at issue]. The Board found that the incorporation language was so confusing in this way that it could not support the insertion of information from the [earlier] application into the [] disclosure by preliminary amendment.

The Federal Circuit reversed the USPTO:

[I]n rejecting the preliminary amendment as new matter, the Board failed to compare the content of the preliminary amendment against the initial parent application. . . . At the time the ’566 application was filed, the co-pending and simultaneously filed ’579 application had not yet been assigned a serial number or awarded a filing date. Thus, the title of the application, named inventors, and the fact that the application was filed on the same day as the ’566 application constituted all of the identifying information available to the drafter of the ’566 application. This information was sufficient to unambiguously identify and incorporate by reference the disclosure of the ’579 application into the disclosure of the ’566 application. . . . The preliminary amendment thus does not contain new matter compared to the initial parent application. When entered, the preliminary amendment revises the disputed “present application” language, resolving any alleged confusion presented by the manner in which the ’880 application was filed.

In addition to failing to compare the preliminary amendment to the initial parent disclosure, the Board appears to have applied the wrong standard in determining that the incorporation language was confusing. The disputed continuation application is at the initial filing stage, where the examiner is first presented with an original disclosure and a preliminary amendment. The proper standard by which to evaluate the sufficiency of incorporation by reference language, at this stage of the proceedings, is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented. In other words, the relevant inquiry is whether a reasonable examiner would be so befuddled by the language of the original disclosure, despite the explanation provided in the transmittal and preliminary amendment, that he could not determine what document was intended to be incorporated by reference.

Also in the footnes:

Harari argues that the correct standard is how the statement would be understood by one of skill in the art. We agree with Harari that if we were determining the validity of an issued patent containing the disputed incorporation by reference statement, “filed on the same day as the present application,” where that language actually refers to an application other than the one issued, then we would be concerned with whether one of ordinary skill in the art could identify the information incorporated. The present case, however, does not involve an issued patent or language that is intended to appear in an issued patent. Thus the proper lens through which to view the disputed language is that which is ascertainable to a reasonable examiner.

REVERSED AND REMANDED

Read/download the opinion here (link)