United States Federal Circuit

On appeal a decision of the Board of Patent Appeals and Interferences holding that the appellants' single claim involved in an interference with the appellees was time-barred under 35 USC section 135(b)(1), the decision of the Board is affirmed, where: 1) to overcome a section 135(b) bar for a post-critical date claim, an applicant must show that such claim is not materially different from a pre-critical date claim present in the application or any predecessor thereto in order to obtain the benefit of the earlier filing date, and in this case the Board found material differences; 2) the Board properly presumed material differences between the plaintiffs' post- and pre-critical date claims; 3) the Board did not establish any absolute requirement that the pre-critical date claims must have been patentable to the plaintiff, and doing so would have been harmless error; and 4) the Board did not abuse its discretion in declining to consider a claim for the first time on rehearing.

Appellate Information

• Decided 02/07/2012
• Published 02/07/2012

Judges

• Linn

Court

• United States Federal Circuit

Counsel

• For Appellant:
  
• Doreen Yatko Trujillo, Oliver R. Ashe, Jr.