By: Karin C. Khan

Harold Garner appealed a December 14, 2006 decision by the Board of Patent Appeals and Interferences (the BPAI”) that he had not made a prima facie showing of priority.

During prosecution of his patent application, Garner’s claims were rejected as being anticipated by the Quate patent that had a provisional application filing date of May 29, 1998. Due to the fact that Garner’s application claimed priority to a provisional application filed June 4, 1998, he amended his application in order to provoke an interference with Quate’s patent.

To demonstrate priority under 37 C.F.R. §41.202(d), Garner initially submitted a declaration he executed on November 28, 2001 in his parent application, as well as a declaration by John Fondon executed on October 20, 2005. Garner’s declaration included photographs of the device and a lab notebook. However, because Garner had previously submitted this declaration under 37 C.F.R. 1.131, it was rejected by the examiner as “insufficient” to provoke an interference under Rule 202(d). Instead, Garner re-titled his November 28, 2001 declaration as the “Rule 202(d) declaration.”

The BPAI still found that Garner did not establish a prima facie showing of priority. In response, Garner then submitted a declaration dated September 2, 2003, and each of the specifications from his provisional and utility applications. However, the BPAI refused to consider these items as evidence, stating they were “new evidence” not permitted by Rule 202(d). As a result, Garner appealed the BPAI’s decision.

On appeal, the Court of Appeals for the Federal Circuit stated that when reviewing an agency decision, the “agency’s interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation.”

As such, the Court then focused on two pertinent sections of 37 C.F.R. §41.202 that set out the requirements an applicant must meet in order to provoke an interference. Rule 202(a)(5) essentially provides that when an applicant suggests an interference, any claim that has been added or amended to provoke the interference must provide a claim chart showing the written description for each claim in the specification. In turn, Rule 202(d)(2) provides that if the applicant fails to show priority under paragraph (d)(1), an interference can still be declared to place the applicant under an order to show cause why judgment should not be entered against the applicant on priority. Any new evidence in support of priority will not be admitted except on a showing of good cause.

When the BPAI decided that Garner’s submission was “new evidence,” it considered Rule 202(d)(2) and Rule 202(a)(5) as two separate unrelated sections. However, the Court agreed with Garner that the BPAI’s misconstrued the relation between Rule 202(a)(5) and Rule 202(d)(2) because Rule 202(a)(5) already provides that the applicant must submit a claim chart evidencing the written description for each claim in the specification. Because Garner already submitted evidence of the specifications in connection with the claim charts, the Court found that the two specifications submitted by Garner were not “new evidence” for purposes of Rule 202(d)(2).

Even though the Court decided that the two specifications were not “new evidence” under Rule 202(d)(2), it still found that Garner failed to establish a prima facie showing of priority based on the fact that he did not sufficiently demonstrate an actual reduction to practice. Although the Court considered Garner’s specifications under Rule 202(d)(2), the declaration by John Fondon was declared as insufficient collaborative evidence because it did not state that the device was in operation or worked for its intended purpose. Since the Court found that Garner did not make a prima facie showing of priority, it concluded that the BPAI’s misinterpretation of its rule was harmless error.