Last week, this blog began reviewing Case 5 of the Comparative Study on Hypothetical/Real Cases: Novelty (November 2009), which is based on In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997). The blog found time to discuss the burden of proof, the novelty rejection, inherency, the declaration, and the standard of review. However, the blog could not address the proposed amendment. Why?
In our view, there are two, more significant issues: broadest reasonable interpretation (BRI) and indefiniteness. Before we proceed, it should be made explicit the claims of child US Patent No. 6,431,415 seem to differ from the claims of parent US Serial No. 08/187,111 in a way that addresses these issues. So, our analysis is confined to the parent claims (i.e., to Case 5).
The Case 5 claim recites “the taper of the top being . . . such as to . . . permit the dispensing of only a few kernels at a shake of a package when the top is mounted on the container.” The ‘415 patent sets forth measurements of the container and popcorn kernels at col. 1, ll. 54-56, and col. 2, ll. 61-65. However, these measurements are not recited in the Case 5 claim.
Rather, the claim is set forth with an indefinite number (e.g., “[’few’] has never been used of a definite number”) of a non-standard measure (i.e., popcorn kernels). If the phrase “only a few kernels” is not indefinite in this context, then it is likely broad enough to be anticipated by the prior art Harz patent.
Why did the Board of Patent Appeals and Interferences (BPAI) and Court of Appeals for the Federal Circuit not address these BRI and indefiniteness issues? Under US practice, these Courts generally do not review the patent application to determine if a more appropriate rejection could be made. Rather, the BPAI (and PTAB) limit their review to the Examiner’s rejection.
Here, the Examiner rejected the claim as lacking novelty over inherent features of the Harz patent. Under American jurisprudence, the Courts should address that rejection; the Courts typically should not consider a new rejection premised on BRI and indefiniteness. The Courts found sufficient reasoning and evidence to uphold the Examiner’s rejection and, thus, found no error.
This blog will eventually address a proposed amendment. However, as discussed last week, this case is quite complex. So, please bear with us for a little longer.