Mid-July Developments

Scott Daniels | July 22, 2010

1. Board Reverses Rejection of Breed Airbag Patent

David Breed and Automotive Technologies International (ATI) won a victory yesterday at the PTO Board.  In a reexamination of their U.S. Patent No. 6,712,352 for an “arrangement for controlling deployment of a side airbag,” Breed and ATI substantially amended their claims to distinguish over certain prior art.  In doing so, however, they included claim wording that the examiner found to lack written description support in the ‘352 specification.  Although original claims under reexamination are not checked for compliance with 35 U.S.C. § 112, amendments to original claims and new claims are, and the examiner therefore rejected the pending claims.

The Board has now reversed the examiner, finding that the ‘352 specification is “sufficiently clear that the inventors possessed the claimed subject matter as evidenced by explicit identification of the problem of side airbag deployment causing injury to a child when the child’s head is against the airbag module, and statements indicating that the described invention addresses this identified problem.”

ATI sued Honda and Hyundai in Delaware in 2006 for alleged infringement of the ‘352 patent and seven other related airbag patents.  Reexamination certificates issued for two of those patents in 2008, but the other five remain in reexamination.  The Delaware case has been stayed pending resolution of these reexaminations.

2. Update on Apple’s Reissue Problem

At the end of April we reported that the PTO Board had affirmed the rejection of Apple’s reissue application because Apple had broadened its claims “beyond the two-year statutory period in a manner unrelated to the broadening aspect [of the claim] that was identified within the two-year period” (emphasis added).

Apple has now filed a notice indicating that it will pursue an appeal of the rejection at the CAFC.  Although there has been speculation in some quarters about laches as an issue, we expect that the case will be decided in light of the requirements of 35 U.S.C. § 251, ¶ 4.

3. Early Inter Partes Reexamination Continues

One of the very first inter partes reexaminations – Reexamination Control 95/000,018 – will keep on going, at least for a little while.  Earlier this month, the PTO Board reversed a series of rejections and affirmed the examiner’s refusal to adopt other rejections proposed by the requester.  Most interesting for patent practitioners is the Board’s criticism of the examiner for “improperly combining” certain elements of a reference, including background description of prior art, to obtain an anticipatory reference.

Unfortunately for the patentee, the Board also found that the examiner should have rejected the claims for containing an improper broadening amendment.  The Board therefore entered a “new ground of rejection” under 37 C.F.R. § 41.77(b).  The patentee may now ask the Board to reconsider or request that prosecution be reopened.  We expect that the patentee will take the latter approach, by amending its claims, in an attempt to bring the nine year reexamination to a conclusion.

4. “Heart of the Invention” may be Enough for Rule 131 Declaration

The patentee in Ex parte TEST.COM attempted to overcome a prior art rejection by filing a Rule 131 declaration antedating the references relied on by the examiner.  The examiner, however, refused to withdraw the rejection, finding (1) that the declaration was not signed by all the inventors, and (2) that the reduction to practice presented in the declaration did not include all the limitations recited in the claims.

The Board disagreed with the examiner on both points.  First, Rule 131 declarations in reexaminations, unlike those in original prosecution, need not be signed by the inventors – signature by the patent owner is sufficient.  Second, the asserted reduction to practice is sufficient if it shows the “heart of the invention” and if any differences from the claims would be obvious to one skilled in the art.  The Board therefore reversed the rejection.

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