Housey v. Berman

When deciding whether an applicant had, before the one-year critical date, a claim to "the same or substantially the same subject matter" as a patent claim under 35 U.S.C. § 135(b), the Board must not apply the obviousness standard of 35 U.S.C. § 103 or the "same patentable invention" definition of 37 CFR § 1.601(n), which relates to § 135(a). The earlier claim must be directed to the same or substantially the same subject matter, not merely related subject matter, and the comparison is of the claims themselves. Where a pre-critical-date antibody claim differed fundamentally from the patentee's cell-based screening method claims, the later-presented claim was barred. No prior precedent directly addressed this issue in the text: the Board noted Berman cited no authority applying § 103 obviousness to § 135(b) and it found none. For the party opposing the applicant (the patentee), the decision means a prima facie § 135(b) case can rest on a facial comparison of the claims when the pre-critical-date claim is plainly divergent, and an obviousness theory supported by prior art and expert declaration will not defeat the bar. For the applicant, a claim that is merely related to the patent's subject matter, or that would make the patent claims obvious, will not save a later-presented claim, so the applicant must show an actual earlier claim to substantially the same subject matter. The Board relied on Corbett v. Chisholm, 568 F.2d 759 (CCPA 1977), and on Reiser v. Williams, 255 F.2d 419 (CCPA 1958), and Stalego v. Heymes, 263 F.2d 334 (CCPA 1959), which applied limitation-by-limitation comparisons of "essential patentable subject matter" or "substantially identical processes," and it contrasted Aelony v. Arni, 547 F.2d 566 (CCPA 1977), which concerned interference in fact. LEGAL TEST OR STANDARD: Section 135(b) provides that "A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted." A later claim is not barred if the applicant had on file, before the critical period, a claim directed to the same or substantially the same subject matter as the patentee's claim. The Board compared the claims themselves (same as, or same or substantially the same subject matter) and rejected the § 103 obviousness standard and 37 CFR § 1.601(n) "same patentable invention" as governing § 135(b). TRIGGERING FACTS: Berman's sole claim 64 was introduced by preliminary amendment filed October 17, 1997, nearly eight years after Housey 281 (granted December 25, 1990) and nearly five years after Housey 464 (granted November 30, 1993). Berman relied on original claim 27, made before those grants, which was directed to an antibody and recited no method steps, cell lines or comparison. Housey's claims were methods using two cell lines to determine whether a substance inhibits or activates a protein. Berman argued claim 27 plus prior art would have made Housey's claims obvious and offered a declaration from Dr. Anthony B. Chen. KEY QUOTE: "We do not agree with Berman that the decision whether a party was claiming “the same or substantially the same subject matter” as that language is used in 35 U.S.C. § 135(b) is governed by the obviousness standard of 35 U.S.C. § 103." (Paper 45, p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed Corbett v. Chisholm, 568 F.2d 759, 196 USPQ 337 (CCPA 1977), read Reiser v. Williams, 255 F.2d 419, 118 USPQ 96 (CCPA 1958) and Stalego v. Heymes, 263 F.2d 334, 120 USPQ 473 (CCPA 1959) as not supporting an obviousness standard, and contrasted Aelony v. Arni, 547 F.2d 566, 192 USPQ 486 (CCPA 1977). PRACTICE TIP: If you are an applicant facing a § 135(b) bar, identify a pre-critical-date claim that is truly directed to the same or substantially the same subject matter as the patent claim, by a claim-to-claim comparison, rather than arguing obviousness over prior art. If you are the patentee, move on the face of the claims where the earlier claim is plainly divergent in scope and emphasis.