The Cheung patent is a continuation-in-part with a filing date after the filing date of the instant application. The material in Cheung relied on in the rejection to allegedly reject the claims has a priority date after the filing date of the instant application.
The instant application was filed on February 25, 2005. Cheung was filed on Jun 12, 2006, and claims priority through a provisional patent application filed June 10, 2005, after the filing date of the instant application. Cheung also claims priority, as a continuation-in-part, through Patent no. 7,116,976 to Thomas filed Dec. 7, 2004 (Thomas), which, in turn, claims priority through provisional application no. 60/527,565 filed on Dec. 8, 2003 (provisional). A continuation-in-part, by its very nature, adds matter not disclosed in the earlier filing. “A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not disclosed in the said earlier nonprovisional application.” MPEP 201.08, emphasis in original. The Cheung Patent adds considerable matter not disclosed in the earlier priority documents with the earlier filing dates (Thomas and the provisional), and only receives the priority date for the matter that was present in the priority documents.
Showing posts with label CIP Priority. Show all posts
Showing posts with label CIP Priority. Show all posts
Tuesday, October 7, 2008
Thursday, June 5, 2008
CIP apps don't get presumption of priority
PowerOasis v. T-Mobile (Fed. Cir. 2008)
The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.
The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.
Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.
Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.
Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”
http://www.patentlyo.com/patent/2008/04/patentee-has-no.html
The district court granted summary judgment to T-Mobile — finding the PowerOasis cell-phone vending machine patents invalid.
The patent family history includes a continuation-in-part (CIP) preceded by a continuation and an original utility patent application. Based on the prior art date, the issue boiled down to whether the asserted patents could claim priority through the CIP to the original application.
Patentee Bears Burden of Proving Priority. Despite the statutory presumption of validity, the CAFC first held that the patentee normally has the burden of proving priority. The exception is when the PTO considers the issue of priority during prosecution. In drafting the opinion, Judge Moore shifted the decision from a question of validity (where a presumption lies) to a question of effective filing date (where there is no statutory presumption). “When neither the PTO nor the Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.”
Interestingly, this decision falls runs parallel to Microsoft’s recent petition for certiorari in the z4 case.
Written Description: To claim priority to the original application date, that original application must “convey with reasonable clarity to those skilled in the art, as of the filing date sought, [that the inventor] was in possession of the [claimed] invention.” (Quoting Vas-Cath). Here, the original application disclosed a “display” and “user interface” while the asserted patent claimed a “customer interface.” Although these terms appear quite close, the CIP had added specific examples of a laptop customer interface while the original application only included interface embodiments attached to the vending machine. This makes a difference because the accused device uses a laptop and the patentee asked for a construction of the term that would include the laptop interface.
Holding: “Because none of this support was present in the Original Application and because the Original Application did not disclose a customer interface apart from the vending machine, the asserted claims are only entitled to the 2000 CIP Application.”
http://www.patentlyo.com/patent/2008/04/patentee-has-no.html
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