United States: Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims Of Continuing Application

Last Updated: February 14 2018
Article by Jennifer J. Chheda

A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or divisional application of earlier filed patent applications and the entitlement of the claim to priority to those earlier filed patent applications, which have published prior to the filing date of the continuation or divisional application. In addition, the decision serves as a reminder to petitioners in PTAB proceedings (as well as litigators in litigations) to carefully review an earlier filed patent application(s) for support for claim terms used in a patent, which is a continuation or divisional application of an earlier filed patent application that published before the continuation or divisional application was filed, to determine if the earlier filed patent application is a basis for alleging anticipation of the claims.

On January 30, 2018, the PTAB issued a final written decision finding that the petitioner had shown by a preponderance of the evidence that all of the claims in patent owner's U.S. Patent No. 9,074,029 B2 (the "'029 Patent") were unpatentable over the publication of an earlier patent application to which the '029 Patent claims priority. Reckitt Benckiser LLC v. Ansel Healthcare Prods., IPR2017-00066, Paper 35 (P.T.A.B. January 30, 2018). In particular, the PTAB found that the publication of the earlier patent application did not provide written description support for the breadth of the '029 Patent claims, and thus, the patent claims were not entitled to the benefit of the filing date of the earlier patent application. However, the publication of the earlier patent application did have written description of an embodiment falling within the scope of the '029 Patent claims, and thus, the publication of the earlier patent application anticipated the '029 Patent claims.

The sole independent claim 1 of the '029 Patent recites:

A synthetic polyisoprene elasomeric glove or condom made of a layer of elastomer comprising:

synthetic polyisoprene particles;

inter-polyisoprene particle cross-links; and

intra-polyisoprene particle cross-links,

wherein the intra-polyisoprene particle crosslinks and inter-polyisoprene particle crosslinks are substantially uniformly distributed among and between the synthetic polyisoprene particles.

The petitioner asserted and the PTAB agreed that the phrase "synthetic polyisoprene particles" should be construed as including pre-vulcanized and non-pre-vulcanized synthetic polyisoprene particles. In addition, the PTAB agreed with petitioner's assertion that none of the parent applications to which the '029 Patent claims priority provide written description support under 35 U.S.C. § 112(a) for non-pre-vulcanized synthetic polyisoprene particles — rather, the earlier patent applications only describe pre-vulcanized synthetic polyisoprene particles. Since the '029 Patent claims priority to earlier patent applications, all of which are continuations of each other, the petitioner alleged and the PTAB agreed that the publication of one of the earlier patent applications, which published years before the actual filing date of the '029 Patent, anticipated the '029 Patent claims. Accordingly, the PTAB found that all of the claims of the '029 Patent are anticipated by the publication of an earlier patent application to which the patent claims priority.

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