Federal circuit clarifies requirements for a prior art reference’s entitlement

The ’168 Application, which is directed to logistics systems and methods for the transportation of goods from various shippers by various carriers across different modes of transport (e.g., rail, truck, ship, or air), has a priority date of July 28, 2000. During original prosecution, the patent Examiner rejected the ’168 Application over Lettich, a published, non-provisional application filed April 26, 2001. For Lettich to qualify as prior art to the ’168 Application, it had to be afforded the priority date of its provisional, filed April 27, 2000 (the “Lettich provisional”). After subsequent appellate proceedings, including a rehearing, the Board found that Lettich was prior art to the ’168 Application and affirmed the Examiner’s rejection.

On appeal, appellants (the named inventors of the ’168 Application) argued, inter alia, that Lettich does not qualify as prior art to the ’168 Application. Because there was no dispute that Lettich is a published, non-provisional application that properly invokes a claim of priority to the Lettich provisional application, the sole relevant issue was whether Lettich is entitled to the priority date of the provisional application.

In the proceedings below, the Examiner and the Board analyzed whether the Lettich provisional application provided written description support for at least one published claim in Lettich. Applying this test, the Board identified corresponding support in the Lettich provisional for each limitation of published claim 1 of Lettich and, therefore, found that Lettich qualifies as prior art to the ’168 Application. The Board then relied on other portions of Lettich’s specification to affirm the Examiner’s rejection of the ’168 Application.

On appeal, the CAFC took the opportunity to explain that, while precedent is clear that a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for at least one claim of the patent or published application, it had not yet squarely addressed the specific scenario at issue here—i.e., where an Examiner (or any party challenging the validity of a patent) demonstrates support for one claim and then relies on other portions of the specification (e.g., the Summary of the Invention or Detailed Description, or even other claims) to support an invalidity argument.

The CAFC explained that, even if one demonstrates that a provisional application provides written description support for one claim of the non-provisional application or patent asserted as prior art, the provisional application must also provide written description support for the specific portions of the specification identified and relied on in the prior art rejection. In other words, to claim priority to a provisional filing date, the portion of the application relied on by an examiner (or other party challenging validity) as prior art must be supported by the provisional application. The CAFC further stated that it would make no sense to find that everything in a later-filed application gets the benefit of the provisional date—whether supported or not—just because a single claim is supported by the provisional application.

The general rule is that a reference constitutes prior art for all that it teaches as of its earliest accorded filing date. When dealing with prior art that relies on a provisional filing date, the CAFC emphasized that a reference does not constitute prior art for all that it teaches as of its provisional application’s filing date solely because a particular claimed invention (which most often does not specify everything in the written description) is adequately supported by the provisional application; rather, the provisional must provide written description support for the specific disclosures that are relied on in the prior art rejections.