Hollmer v. Harari
681 F.3d 1351
| Fed. Cir. | 2012Background
- This is a second appeal from PTO interference No. 105,606 between Harari and Hollmer over priority of the ’880 application and the ’601 patent.
- The Board held Hollmer prevailed, finding the ’880 benefits the filing date of the ’566 application due to continuity through intervening applications.
- The Board determined the ’579 application was incorporated by reference into the ’838 and ’768 applications, triggering §120 continuity.
- On Harari I, this court held the Board misapplied the standard and that the incorporation contained in the initial filing stage could be understood by a reasonable examiner; we reversed and remanded.
- On remand, the Board again examined whether the intervening ’838 and ’768 applications sufficiently incorporated the ’579 application by reference to satisfy §120, but concluded continuity was maintained.
- We now hold that the intervening applications do not sufficiently identify the incorporated material to a person of ordinary skill, so the continuity does not hold and the ’880 application is not entitled to the ’566 filing date.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Do the intervening 838 and 768 applications adequately incorporate the 579 application to satisfy §120 continuity? | Harari argues Harari I standard applies and the language suffices. | Hollmer argues the ordinary-skill standard applies in §120 continuity contexts and the language is ambiguous. | Not sufficient; uniqueness of inclusion not identified for a person of ordinary skill. |
| What standard governs evaluation of incorporation by reference in the §120 continuity context? | Harari: Harari I reasonable examiner standard governs all incorporation issues. | Hollmer: ordinary-skill standard controls for §120 continuity questions. | Apply the person of ordinary skill standard for continuity; four-corners requirement applies; Harari I does not resolve this. |
| Does the Board's conclusion that continuity was maintained rest on proper application of incorporation standards? | Harari: Board correctly applied reasonable examiner standard to the interim documents. | Hollmer: Board erred by not applying ordinary-skill standard and by misidentifying the incorporated materials. | Board erred; continuity not established; reversed and remanded. |
| What is the effective filing date of the ’880 application if continuity is lacking? | Harari: §120 requires continuity; if lacking, later date applies. | Hollmer: continuity exists and earliest date should apply. | Continuity not established; wrong date; remanded for new judgment. |
Key Cases Cited
- Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010) (initial Harari I decision distinguishing standard for incorporation at the initial filing stage)
- Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370 (Fed. Cir. 2007) (continuity under §120 assessed with a person of ordinary skill standard)
- Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) (continuity requires disclosures to be within the chain; amendments cannot cure disclosure gaps)
- In re Hogan, 559 F.2d 595 (CCPA 1977) (continuous disclosure requirement in priority chains)
- In re Fouche, 439 F.2d 1237 (CCPA 1971) (analogous situation involving amendment clarifying incorporation)
- Falkner v. Inglis, 448 F.3d 1357 (Fed. Cir. 2006) (priority under §120 and requirement of continuous disclosure)
- Harari I, 602 F.3d 1348 (Fed. Cir. 2010) (standard for evaluating incorporation by reference at initial filing stage)