What Happened
Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application was allegedly anticipated under pre-AIA, 35 U.S.C. § 102(e) and obvious under 35 U.S.C. § 103.
Specifically, the issue was whether the asserted reference, a published non-provisional patent application, was entitled to the priority date of its earlier-filed provisional patent application.
In In re Riggs, Case No. 2022-1945 (Fed. Cir. Mar. 24, 2025) [1] the U.S. Court of Appeals for the Federal Circuit provided that, in general, a reference constitutes prior art for all that it teaches, as of its earliest accorded filing date. However, the court also indicated that a reference, a published non-provisional patent application, is not entitled to the filing date of its earlier-filed provisional application, just because one particular claim of the reference is demonstrated to be supported by the provisional application, in contrast to an earlier PTAB decision.
Rather, the court explained that the provisional application must also provide written description support for the specific portions of the reference that were relied upon in the prior art rejection made by the USPTO. Earlier, during prosecution, the examiner demonstrated support for one claim of reference in the provisional application. However, the examiner then relied on other portions of the specification of the reference to support the non-patentability rejections made, without likewise demonstrating support for those other portions of the reference in the provisional application.
The court mentioned that it made no sense to suggest that when a single claim of the reference non-provisional patent application is demonstrated to be supported by the provisional application, then everything in that non-provisional application is entitled to the provisional application’s filing date.
Why This Matters
There is now an additional requirement for determining whether a prior art patent or published patent application is entitled to its earlier provisional patent application’s filing date, the full requirement for which is:
- has it been demonstrated that the provisional application provides written description support for the claims of the reference patent or published application; and
- has it been demonstrated that the provisional application provides written description support for the specific portions of the specification of the reference patent or published application that were identified and relied upon in the prior art rejection made by the Patent Office during prosecution.
The court referenced its earlier holdings in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), and Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017), as well as MPEP § 2136.03.
What’s Next
Stay tuned for future developments as to whether this reasoning likewise will be applied to matters related to post-AIA, 35 U.S.C. § 102(a)(2), which is the successor of pre-AIA, 35 U.S.C. § 102(e).
[1] The patent application at issue is U.S. Patent Application No. 11/005,678, which was filed on December 7, 2004 and claims priority to a provisional application filed July 28, 2000 (U.S. Provisional Application No. 60/221,541). The asserted reference published non-provisional application is U.S. Patent Application Publication No. 2002/0049622, which was filed on April 26, 2001, published April 25, 2002, and claims priority to a provisional filed April 27, 2000 (US Provisional Application No. 60/200,035).
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