Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.
The opinion of the court was delivered by: Moore, Circuit Judge.
NOTE: This disposition is nonprecedential.
(Reexamination No. 90/010,007)
Before LOURIE, CLEVENGER, and MOORE, Circuit Judges.
Meyer Manufacturing Corporation (Meyer) appeals the decision of the United States Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences (Board) affirming the examiner's rejection of all claims of U.S. Patent No. 5,501,404 (the '404 patent) as obvious over U.S. Patent No. 5,435,494 (Knight) in view of U.S. Patent No. 5,275,335 (the '335 patent) during ex parte reexamination. We affirm.
Meyer's '404 patent, directed to a manure spreader, is a continuation-in-part (CIP) of U.S. Patent No. 5,368,236 (the '236 patent or the parent). The principal difference between the '404 patent and its parent's specification is the height of the disclosed spreader's expellers relative to its discharge opening. In the figures, the parent shows an expeller approximately the same height as its discharge opening. The parent's specification mentions size only twice. For example:
The improved manure spreader of the present invention may utilize one or two expellers . . . . With a horizontal expeller, the length of the expeller is approximately equal to the width of the box discharge opening. With a vertical expeller, the length of the expeller is approximately equal to the height of the discharge opening.
'236 patent col.3, ll.35-45; see also col.6, ll.34-35. Only independent claim 12 recites a limitation on expeller size: "wherein the expellers have respective axial lengths that are generally equal to the height of the discharge opening." Id.
During prosecution of the parent application, Meyer sought to amend four independent claims to include a half-height limitation, where the axial length of the expeller is at least half the height of the discharge opening. During a March 24, 1994 interview, the examiner tentatively agreed, pending supervisor approval. On April 29, 1994, the examiner informed Meyer that he would not enter the amendment because it would add new matter to the specification. Meyer allowed the claims to issue without the amendments, and on July 8, 1994, filed a CIP that disclosed and claimed the half-height expellers. The CIP issued as the '404 patent.
In 2007, an ex parte reexamination of the '404 patent in view of Knight and the '335 patent was requested after Meyer asserted the '404 patent against another manufacturer. Knight discloses a manure spreader having a full-height vertical expeller. In reexamination, the examiner issued a first office action rejecting all claims in the '404 patent as obvious in view of Knight. Knight was filed on April 18, 1994-after Meyer attempted to add the half-height expeller limitation to the parent application, but before Meyer filed the '404 patent. Meyer responded with two arguments that Knight was not prior art. First, Meyer asserted that the rejected claims could claim priority to its parent, and asserted that both Knight and the parent show similar "tall expellers" that are at least half the height of the discharge opening. The examiner considered this argument, but found it unpersuasive. Second, Meyer asserted that the inventors conceived the claimed invention including the half-height expeller before Knight's filing date, as evidenced by the March 24, 1994 examiner interview summary sheet in the parent's file wrapper. Meyer, however, failed to file an affidavit of prior invention as required under 37 C.F.R. § 1.131. Accordingly, the examiner issued a final rejection explaining that the requirements of § 1.131 were not met by the previous response. Meyer subsequently filed a § 1.131 affidavit (the Amendment C affidavit) from the inventors, referencing the March 1994 examiner interview as evidencing conception, and attesting that the inventors and their attorney "were diligent in drafting, revising, and filing the subject patent" from before Knight's filing date until the '404 patent was filed. The inventors' affidavit provided no further facts supporting their assertion of diligence. The examiner entered the affidavit, but noted in an Advisory Action that it was insufficient to establish diligence. On August 19, 2008, Meyer mailed a notice of appeal and filed additional affidavits from the inventors and the attorney who prosecuted the '404 patent and its parent. In the remarks accompanying the affidavits, Meyer stated that "Applicants have filed a notice of appeal." The USPTO received the affidavits on August 21, 2008, and the Notice of Appeal one day later. Despite the fact that the affidavits were received before the Notice of Appeal, the examiner treated the affidavits as if they had been filed after the Notice of Appeal, and refused to enter them.
On appeal, the Board affirmed the examiner's refusal to accord the parent's filing date to the '404 patent claims on the basis of written description, reasoning that the parent specification does not convey with reasonable clarity that the inventor was in possession of the half-height impeller. The Board also concluded that the first affidavit was insufficient to establish diligence because it was "vague and general in nature, lacking in any details, and thus, is not of character and weight sufficient to establish diligence." The Board explained that because the examiner refused entry of the second round of affidavits, they were not part of the present appeal. The Board ...