In re Berger, 01-1129.

• Decision Date: 29 January 2002
• Docket Number: No. 01-1129.,01-1129.
• Citation: 279 F.3d 975
• Parties: In re Kenneth L. BERGER.
• Court: U.S. Court of Appeals — Federal Circuit

Page 975

279 F.3d 975

In re Kenneth L. BERGER.

No. 01-1129.

United States Court of Appeals, Federal Circuit.

DECIDED: January 29, 2002.

COPYRIGHT MATERIAL OMITTED

Edward S. Irons, of Washington, DC, for appellant.

John M. Whealan, Solicitor, Office of the Solicitor, Patent and Trademark Office, of Arlington, VA for appellee. With him on the brief were Bruce J. Chasan, and Kristin L. Yohannan, Associate Solicitors. Of counsel was William LaMarca, Attorney, Office of the Solicitor.

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and LINN, Circuit Judge.

LINN, Circuit Judge.

Kenneth L. Berger appeals the decision of the Board of Patent Appeals and Interferences ("Board") affirming the examiner's rejection of claims 1-4 and 8-20 under 35 U.S.C. § 112, paragraph 2, and of claim 7 under 35 U.S.C. §§ 102(e) and 135(b). Berger also seeks review of the Board's decision declining to review the examiner's refusal to enter amendments after final rejection of the claims. Because the Board did not err in affirming the examiner's rejections under §§ 112, 102(e), and 135(b), and because we, like the Board, do not review in connection with claim rejections an examiner's refusal to enter amendments after final rejection, we affirm.

BACKGROUND

Berger filed U.S. Patent Application No. 08/315,629 ("the Berger application") with the Patent and Trademark Office ("PTO") on September 30, 1994, including claims 1-6. The Berger application is directed to a beverage can having an indentation on the side wall to accommodate the lower lip of the consumer and help minimize spillage when the consumer drinks from the can. Original claim 1 of the Berger application recites:

1. A beverage container comprising:

a circular top portion secured to a cylindrical wall by a rim, said top portion having means to provide an opening for consumption of a beverage in said container;

an indentation means extending from said rim along said wall at least for a distance equal to the distance said opening in said top portion extends from said rim portion, said indentation means being positioned below said rim at a location adjacent said opening in said top, and within the surface area of said indentation means there being no portion extending away from the interior volume of said beverage container beyond where said indentation means and said wall portion meet.

Figures 5-8, depicting an embodiment of the Berger invention, are reproduced below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

By amendment dated June 2, 1995, Berger added claim 7 by copying claim 1 of U.S. Patent No. 5,301,830 to Muller ("the Muller patent"), with the intent of provoking an interference between his application and the Muller patent. Berger claim 7 (Muller claim 1) recites:

7. In a container that is in the form of a beverage-containing can and has a top, bottom, and side portion interconnecting said top and bottom, with said top being provided with opening means for providing to a consumer access to contents of said can, the improvement wherein:

said side portion is provided with a circumferential groove having a first radial depth and a second radial depth extending further radially inwardly than said first radial depth, said groove being disposed adjacent to said can, with said second radial depth having a shape that is essentially adapted to a lower lip anatomy of a consumer;

said opening means includes a pull tab for removing a pull-out section to form a pour-out hole; and said second radial depth being disposed only in the immediate vicinity of said pour-out hole.

Figures 1 and 2 of the Muller patent are reproduced below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Berger subsequently filed an amendment adding new claims 8-20.

On June 10, 1997, the PTO examiner issued a final rejection of claims 1-20. Claims 1-4 and 8-20 were rejected under 35 U.S.C. § 112, paragraph 2, as being indefinite. The examiner cited several unclear limitations of the claims as well as other errors, such as improper double inclusion and lack of antecedent basis. Claims 5 and 6 were rejected for reasons not relevant to this appeal. Copied claim 7 was rejected under 35 U.S.C. § 135(b) as not having been made prior to one year from the date on which the Muller patent was granted. The Muller patent issued on April 12, 1994, and claim 7 was added to the Berger application on June 2, 1995, after the critical date of April 12, 1995. Claim 7 was further rejected as anticipated by Muller under 35 U.S.C. § 102(e). Berger filed a Notice of Appeal to the Board on June 25, 1997.

On August 4, 1997 Berger simultaneously filed a § 1.116(a) amendment ("amendment after final action") to the claims and an appeal brief. Berger argued in the brief that the Berger application complied with § 135(b) because original claims 1-6 were made within one year of the Muller issue date and copied claim 7 was entitled to the earlier effective date of those original claims. Berger failed to contest the merits of the § 112 rejections of claims 1-4 and 8-20, but instead argued that these rejections were moot in view of the § 1.116(a) amendment. In the amendment, Berger sought to amend claims 1, 8, 14, and 20, and add new claims 21-24 without canceling corresponding claims 10, 12 and 19.

The PTO examiner refused to enter the § 1.116(a) amendment submitted by Berger with his appeal brief. In an advisory action dated November 7, 1997, the examiner explained that the amendment did not place the claims in better form for appeal because several § 112 deficiencies would not be purged by the proposed changes and the changes raised new issues. The advisory action also noted that new claims 21-24 had been improperly added without canceling a corresponding number of finally rejected claims. Berger submitted another amendment on December 5, 1997 attempting to cancel claims 10, 12, and 19. In response, the PTO examiner issued another advisory action dated December 18, 1997 refusing to enter either of the amendments submitted by Berger after final rejection of the claims.

In its June 29, 2000 decision, the Board affirmed the examiner's rejections relevant to this appeal. The Board found that Berger's original claims 1-6 submitted prior to the critical date did not contain a material limitation of copied Muller claim 1: "said side portion is provided with a circumferential groove having a first radial depth and a second radial depth extending further radially inwardly than said first radial depth." The Board thus concluded that the copied claim, claim 7, was "substantially different" from claims 1-6. As a result, the rejections under §§ 135(b) and 102(e) were affirmed. As to the § 112 rejections, the Board found that Berger had not contested these rejections but had only argued that they were "moot" in view of the amendments submitted with Berger's appeal brief. Because the PTO had refused to enter the amendments submitted by Berger after final rejection of the claims, the § 112 rejections of claims 1-4 and 8-20 remained uncontested and were sustained by the Board. The Board further found that the examiner had refused entry of the amendments submitted after final rejection in the proper exercise of his discretion, and Berger could obtain relief only via petition under 37 C.F.R. § 1.181, not by appeal in this proceeding.

Berger timely appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (1994).

DISCUSSION

A. Standard of Review

Compliance with 35 U.S.C. § 112, paragraph 2, is a question of law, which this court reviews de novo. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 874, 27 USPQ2d 1123, 1125 (Fed.Cir.1993). We review the Board's construction of 35 U.S.C. § 135(b) de novo, as statutory interpretation is a question of law. In re McGrew, 120 F.3d 1236, 1237, 43 USPQ2d 1632, 1634 (Fed.Cir.1997); In re Kathawala, 9 F.3d 942, 945, 28 USPQ2d 1785, 1786 (Fed.Cir.1993). Anticipation under 35 U.S.C. § 102 is a question of fact. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.Cir.1997). We review the Board's factual findings for substantial evidence. In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1776 (Fed.Cir.2000).

B. Analysis

I. Rejection under § 135(b)

35 U.S.C. § 135(b) states:

(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

35 U.S.C. § 135 (Supp.2001). This provision requires an applicant wishing to provoke an interference with an issued patent to do so by filing a claim which is "for the same or substantially the same subject matter" as a claim of the issued patent, prior to one year from the issue date of the patent. Id. A claim copied from a patent more than one year after the patent issue date may be rejected in an ex parte prosecution pursuant to 35 U.S.C. § 135(b). McGrew, 120 F.3d at 1239, 43 USPQ2d at 1635.

In this case, it is uncontested that the Muller patent was granted on April 12, 1994, and Berger claim 7 was added to the Berger application over one year later, on June 2, 1995. Thus, it is clear that Berger claim 7 was properly subject to rejection in this ex parte prosecution under § 135(b). Berger recognizes the relevance of § 135(b) but argues that the Board rejected claim 7 "for lack of `express language' in appellant's timely-presented original claims [1-6] corresponding to the language of the copied Muller claim." Berger thus makes out an argument that copied claim 7 is directed to the same or substantially the same subject matter as his original claims 1-6 and therefore is entitled to the September 30, 1994 effective date of those original claims, well within the permissive one-year window of § 135(b).

Berger argues specifically that the final rejection was in error to the extent it relied on the finding...