Cromlish v. D.Y.

When a party moves under 37 CFR § 1.633(g) to attack the priority benefit accorded to an opponent in an interference on the ground that the earlier application fails the best mode requirement of 35 U.S.C. § 112[1], the Board will deny the motion unless the movant shows why best mode compliance is required for priority benefit. Benefit for priority establishes only a constructive reduction to practice of all elements of the count, and is distinct from benefit under 35 U.S.C. 120, so disclosure of the best mode is not a requirement for priority benefit. The movant bears the burden by a preponderance of evidence and the Board will not assume a central element of the movant's case. No prior Board precedent is named as directly addressing this issue; the Board cites Tofe v. Winchell, 645 F.2d 58 (CCPA 1981) with a "Cf." signal, noting best mode is ancillary to priority but not determinative, and explains that old-rule interference practice (where right to make was ancillary to priority) is no longer controlling. For the party attacking benefit, a best mode attack on an opponent's earlier applications is no longer a viable ground for stripping priority benefit, and the movant must supply authority and reasoning for why best mode matters. For the party accorded benefit, an earlier application that describes and enables an embodiment within the scope of the count can support constructive reduction to practice under § 102(g)(1) even if the party could not obtain a patent for another reason. The Board relied on Credle v. Bond, 25 F.2d 1566 (Fed. Cir. 1994), for the nature of priority benefit, In re Schoenwald, 964 F.2d 1122 (Fed. Cir. 1992), for the lower disclosure standard for references, and Bosies v. Benedict, 27 F.3d 539 (Fed. Cir. 1995), for the movant's burden. LEGAL TEST OR STANDARD: A movant bears the burden of establishing its entitlement to the relief sought by a preponderance of evidence under 37 CFR § 1.637(g) and Bosies v. Benedict. The movant must make out a prima facie case, including why best mode compliance is required for priority benefit. Priority benefit establishes a date for constructive reduction to practice of all elements of the count (37 CFR § 1.637(f)(3)), and the key tests for a reference-like disclosure are whether it describes and enables the invention. TRIGGERING FACTS: Cromlish, the junior party, filed Preliminary Motion 3 under 37 CFR § 1.633(g) attacking the benefit accorded to D.Y. of four predecessor applications, contending D.Y. did not disclose its contemplated best mode until it filed its involved application. The motion rested only on best mode and cited no authority for requiring best mode for priority benefit. The rule applies to benefit accorded for priority purposes, not to benefit under 35 U.S.C. 120 asserted against unpatentability motions. KEY QUOTE: "Priority is not a basis for granting a patent to that party; rather, it is the basis for denying patentability to another party under 35 U.S.C. 102(g)(1)." (Paper No. 65, p. 3) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board cites Tofe v. Winchell, 645 F.2d 58, 209 USPQ 379 (CCPA 1981), with a Cf. signal (best mode not determinative of priority but ancillary to it), and Perkins v. Kwon, 886 F.2d 235 (Fed. Cir. 1989), also with Cf. The follow-on reconsideration decision (Paper 76) vacated only the portion of Paper No. 65 titled Effect on Unpatentability Motions, not the best mode holding. PRACTICE TIP: Do not file a § 1.633(g) preliminary motion seeking to deny an opponent priority benefit solely for failure to disclose the best mode; if you attack benefit, rely on grounds showing the earlier application does not describe and enable an embodiment within the count, and brief authority for any proposed requirement. Seek reconsideration within the fourteen days stated in the order under 37 CFR § 1.640(c) rather than waiting for final hearing.