CAFC interprets 35 USC 135(b) in Adair

The issue:

Adair argues that the Board erred by failing to assess material differences “in view of the patent claim being copied [claim 66 from Carter’s ’213 Patent].” Appellant Br. 22. According to Adair, this court’s precedent does not endorse a test that allows the Board to completely ignore copied claim 66 from Carter’s ’213 Patent when assessing the material differences between the post- and pre-critical date claims. Adair argues that the materiality test from Berger and Regents requires an assessment of material limitations based on the “identity” between the post- critical date claim and copied claim 66 from Carter’s ’213 Patent—in other words, in view of the “count”—and not based on the post-critical date claim standing alone. See Regents, 455 F.3d at 1375 (“[A]s this court’s precedent explains, California must demonstrate that claims in the ’191 application provide pre-critical date support for the post-critical date identity between claim 205 [the post- critical date claim] and the ’646 patent [the issued pat- ent].” (emphasis added)); Berger, 279 F.3d at 983.

Carter counters that the question of “[w]hether there is a sufficient degree of identity between pre- and post- critical date claims for compliance with § 135(b) is an inquiry that is distinct and independent” from any comparison with the patent claims copied. Appellee Br. 33. According to Carter, the Board correctly interpreted § 135(b)(1) in holding that “establishing support for post- critical date claims does not entail looking at material limitations of the patented claims.” Id. 42.

This court agrees with Carter.

The bottom line:

For these reasons, this court holds that to overcome a § 135(b) bar for a post-critical date claim, an applicant must show that such claim is not materially different from a pre-critical date claim present in the application or any predecessor thereto in order to obtain the benefit of the earlier filing date. Any claims filed within the critical period, whether or not later cancelled, may provide pre- critical date support for the later filed patent claim(s), so long as the pre-critical date claims are not materially different from the later filed claim(s). Corbett, 568 F.2d at 765-66; see also Regents, 455 F.3d at 1373; Berger, 279 F.3d at 981-82.

Festo is cited:

Carter counters that “the Board’s presumption of material differences is firmly grounded in the law.” Appellee Br. 44. See Parks v. Fine, 773 F.2d 1577, 1579 (Fed. Cir. 1985); Corbett, 568 F.2d at 765.

Carter is correct. When an applicant adds limitations in response to an examiner’s rejection, and those limita- tions result in allowance, there exists a well established presumption that those limitations are necessary to patentability and thus material. See Festo, 535 U.S. at 734; Corbett, 568 F.2d at 765. This presumption applies with equal force in the interference context. Parks, 773 F.2d at 1579 (holding in an interference case that “[t]he insertion of [a] limitation to overcome the examiner’s rejection is strong, if not conclusive, evidence of materiality” (emphasis added)).