We received a question about Case 5 of the Comparative Study on Hypothetical/Real Cases: Novelty (November 2009). Case 5 is based on In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997). The specific question was about how to amend the Case 5 claim to address the novelty rejection.
It is difficult to propose an amendment without reading the application. A copy of the application (Serial No. 08/187,111) could not be located. However, a continuation-in-part of that application issued as US Patent No. 6,431,415 (“the ‘415 patent”). So, the continuation-in-part patent should include all of the disclosure and figures of the parent application.
Therefore, we will consider the Case 5 claim in view of the ‘415 patent.
This case seems to implicate many concerns about the burden of proof. The view of the Japan Patent Office (JPO) apparently first considers whether an unknown attribute of popcorn was discovered. Comparative Study at 34. Concluding such an attribute was not discovered, the JPO considers whether the prior art Harz patent discloses a suitable structure to permit dispensing of only a few kernels of popped popcorn. The JPO holds Harz “can’t be considered to disclose the structure which is suitable.” Id. at 35. Thus, the Case 5 claim is novel to the JPO.
The American side is even more complex. The prosecution history could not be located, but it seems the Examiner asserted the prior art Harz patent inherently taught dispensing of only a few kernels of popped popcorn. Schreiber submitted a declaration against the novelty rejection (!) that first was not entered by the Examiner. After Schreiber appealed to the Board of Patent Appeals and Interferences (BPAI), the declaration was entered but found insufficient by the Examiner, BPAI, and the Federal Circuit. Further, the BPAI and Federal Circuit merely reviewed the previous record of the case. That is, they did not review the case de novo to determine whether a better rejection could have been made.
This blog will likely review Case 5 over the next few weeks. So, our proposed amendment will need to wait a bit. However, if the suspense is too much, feel free to contact us.