The USPTO published a new informative BPAI decision, Ex parte Smart, Appeal No. 2009-015036, application 10/818,920 (03 January 2011), on Saturday 4/2/11. See http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd09-015036.pdf.
Smart is precedential in the sense that it is the first published Board decision on an appeal dealing with the Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009) claim construction doctrine for copied claims (herein after, the Agilent doctrine). And Smart significantly expands the Agilent doctrine into ex parte, pre-interference, prosecution. By way of background, the Agilent doctrine requires that, during an interference proceeding, claims that have been copied from the target case be construed based upon the disclosure of the target case for purposes of determining whether the copier has written description support, instead of being construed based upon the disclosure of the copier. In Smart, the BPAI panel applied the Agilent doctrine for determining whether Smart’s claims had written description support in Smart’s application, by construing Smart’s claims based upon the disclosure of the application with which Smart sought an interference. While this decision is significant for many reasons, it is complicated, and leaves many interference related questions unanswered.
However, the practical effect of this decision is that it implicates what an applicant states in remarks prior to an interference in how the applicant’s claims will be construed, ex parte, for purposes of compliance with the written description requirement of 35 USC 112.
Rick Neifeld, Ph.D. Patent Attorney
President, Neifeld IP Law, PC
4813-B Eisenhower Avenue
Alexandria Virginia 22304
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