CAFC affirms PTAB in In re Clarke: the doctrine of prosecution history estoppel is inapplicable during prosecution

The technology at issue in Clarke:


The invention disclosed in the ’625 application is useful
for storing and ripening fruits that ripen “when exposed to
ethylene or another [ethylene ripening agent].” J.A. 163.
Such fruits include bananas, tomatoes, avocados, Bartlett
pears, kiwis, melons, peppers, and mangos. These fruits
are often picked when unripe and commercially ripened
near a final point of sale via exposure to ethylene in a ripening room.
The commercial ripening process can pose a
problem, however, because produce is shipped in sealed
bags that must be opened to allow ethylene exposure and
because ripening can occur rapidly once fruits are exposed
to ethylene.

The ’625 application discloses a fruit ripening container that
“mitigate[s] or overcome[s]” these problems by
“provid[ing] a pathway for oxygen, carbon dioxide and
ethylene to enter or leave the container.” J.A. 147. Specifically, it discloses containers that:
include at least one atmosphere control member
which provides a pathway for O2 and CO2, and
which preferably comprises a gas-permeable membrane comprising
(1) a microporous polymeric film, and
(2) a polymeric coating on the microporous film.
J.A. 161. The atmosphere control member (“ACM”) is
“preferably a control member as described in one or more
of U.S. Patent Nos. 6,013,293 [De Moor] and 6,376,032 and
International Publication No. W000/04787 . . . . ” Id. The
specification discloses two types of control members, Type
S and Type A, with differing oxygen permeabilities. The
ACM is secured to a portion of the container, usually a bag,
in which one or more round holes has been cut. J.A. 168.
It may be secured on the interior or exterior of the bag. J.A.
169.




Of burdens:



The Board cited In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990), for the proposition that, once it is
shown that the prior art provides guidance on optimal
ranges, the burden shifts to the applicant to show that the
claimed range achieved unexpected results. Thus, because
“both oxygen permeability and ethylene permeability were
known to have an effect,” the Board explained that the burden was on Clarke to establish that the result of the
claimed invention was unexpected—a burden he failed to
carry. J.A. 24.

(...)

We review the Board’s factual findings for substantial
evidence and its ultimate determination of obviousness
without deference. Gartside, 203 F.3d at 1315–16. “Substantial evidence is more than a mere scintilla. It means
such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion.” Consol. Edison Co.
v. NLRB, 305 U.S. 197, 229 (1938).



Of language "consists of":


We find no error in the Board’s analysis. While prior
art elements must be arranged in the same manner as the
claim, “the reference need not satisfy an ipsissimis verbis
test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Here, although De Moor contains structures in addition to
those found in the proposed claims, substantial evidence
supports a finding that each element of each of the claims
is present in the prior art.

Accordingly, we see no error in the Board’s analysis of
De Moor’s disclosure, and reject Clarke’s contention that
the “consists of” language of the claim somehow excludes
De Moor’s ACM as a matter of law.



Of prosecution history estoppel:


Clarke’s argument fails, however, because the doctrine of prosecution
history estoppel is inapplicable during prosecution. Instead, the doctrine is applicable only to issued patents and
available only to patentees. See Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003) (“[W]here
the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the
claim congruent with the scope of the surrender.” (emphases added)). To receive the benefit (or detriment) of a prosecution history disclaimer, an applicant must persuade an
examiner that his claims are, as a matter of fact,
distinguishable from the prior art. Clarke has failed to do
so in this case. We, therefore, find no legal error in the
Board’s analysis of the scope of the proposed claims.