In affirming in part and remanding in part a decision from the U.S. Patent and Trademark Office Board of Appeals and Interferences (Board) the U.S. Court of Appeals for the Federal Circuit held that the Board did not abuse its discretion in refusing to consider a motion that failed to comply with the Standing Order of the Board but that the Board failed to apply the correct standard in deciding whether Bilstad’s disclosure supported the count under the written description requirement of 35 U.S.C.§ 112, 1. Bilstad v. Wakalopulos, No. 03-1528 (Oct. 7, 2004).
Bilstad provoked an interference on an invention for sterilizing three-dimensional objects using ionizing radiation by copying claims from a patent of Wakalopulos. The count included a limitation calling for a moveable member manipulating objects in a plurality of directions within the reactive volume wherein the manipulated objects are sterilized. Wakalopulos filed a motion for judgment stating the claims were unpatentable to Bilstad alleging their application did not provide written description support for manipulating objects in a plurality of directions. After the time period for filing a motion to amend claims passed, Bilstad attempted to obtain an extension of time to file an amended set of claims to remove the limitations alleged to lack written description support. The Board refused to allow Bilstad the extension of time. Then, without conducting a prior conference call with the administrative patent judge (APJ), as required by the standing order, Bilstad filed a miscellaneous motion seeking leave to belatedly file the amended claims. The Board refused to consider the motion because Bilstad did not comply with the prior conference call rule. The Board also granted Wakalopulos’ motion holding the claims unpatentable to Bilstad for a lack of written description support. Bilstad appealed.
Bilstad argued that the Board improperly merged different dictionary definitions to construe the claim term "plurality" to mean "an indefinite numerical range bounded by two and infinity." Bilstad also argued that their applications discloses manipulating the objects in a small number of directions that satisfies the written description requirement for claiming a "plurality of directions." Bilstad also argued that a conference call in which the extension of time was discussed satisfied the required conference call for the miscellaneous motion.
The Court held that the Board properly construed the term "plurality" by merging different dictionary definitions since the Board considered both proffered dictionary definitions to be incomplete. However, in remanding the Board’s determination of a lack of written description, the Court determined the Board did not adequately discuss the understandings of persons skilled in the art and whether Bilstad’s written description would reasonably convey to a person skilled in the art that Bilstadhad possession of the claimed subject matter. The Court also noted the Board made no findings on the predictability of the art. However, agreeing Bilstad failed to conduct a conference call with the APJ prior to filing its miscellaneous motion, the Court affirmed the Board’s refusal to consider Bilstad’s miscellaneous motion.
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