Furman v. Cheng

Informative decision only: persuasive authority, not binding precedent. In an interference, benefit for the purpose of priority is accorded with respect to the count, not the claims corresponding to it, so a party need only show that its benefit application describes a single enabled embodiment within the scope of the count (including any one alternative of a multi-alternative count) to have a constructive reduction to practice. The opponent attacking benefit bears the burden under 37 CFR § 1.637(a) of showing that the benefit application does not constitute a constructive reduction to practice of any alternative of the count, and the party need not show §112 first-paragraph compliance as to its own involved claims. The decision draws a distinction between benefit under 35 U.S.C. §§ 119 or 120 to overcome prior art, which is shown claim by claim, and benefit for the purpose of priority, which is shown against the count, and it relies on Anderson v. Norman for that distinction. For the opposing party in an interference (here Furman), a motion attacking benefit must show that the benefit application fails to support every alternative of the count, and showing that the party's own claims are unsupported is not enough. For the party accorded benefit (here Cheng), the benefit stands if any one embodiment within the count is described and enabled, and the party need not show that its involved claims are supported. The Board relied on Hunt v. Treppschuh (CCPA 1975), Weil v. Fritz (CCPA 1978), In re Lukach (CCPA 1971), In re Gosteli (Fed. Cir. 1989) and In re Wertheim (CCPA 1976), along with Packard Press v. Hewlett-Packard (Fed. Cir. 2000) on arguments raised for the first time at oral argument. LEGAL TEST OR STANDARD: Benefit for the purpose of priority is accorded with respect to a count. A benefit application constitutes a constructive reduction to practice if it describes a single enabled embodiment within the scope of the count, and the 35 U.S.C. § 112 first paragraph requirements need only be met for an embodiment within the count. It is not necessary to show § 112 compliance as to a claim of the party's involved patent or application. Where a count is drawn to alternatives, a constructive reduction to practice of any one alternative suffices. The challenger bears the burden of proof under 37 CFR § 1.637(a) by a preponderance of the evidence. This differs from benefit under 35 U.S.C. §§ 119 or 120 to overcome prior art, which must be established independently for each claim. TRIGGERING FACTS: Cheng was accorded benefit of two earlier applications in the Notice Declaring Interference, and Furman moved under 37 CFR § 1.633(g) to deny it, arguing that the Cheng claims corresponding to the count were limited to particular compounds. The single count was the sum of Furman claims 1, 2, 3 and 5 and Cheng claims 3, 37, 40, 41, 152, 153, 156 and 157, and Furman claim 2 covered administering the compound 1-(2-(hydroxymethyl)-1,3-oxathiolan-5-yl)-cytosine without limiting it to the cis form. Furman's expert assumed the cis isomer was required, did not analyze the examples, Table 1 or the drawings, and neither party repeated the tests to determine which isomer was inherently involved. Furman argued at oral argument for the first time that only the cis form was operative. KEY QUOTE: "Benefit is accorded with respect to a count, not claims corresponding to a count." (Paper 58, p. 7) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The decision follows Anderson v. Norman, 185 USPQ 371 (Comm'r Pat. 1968), Hunt v. Treppschuh, 523 F.2d 1386 (CCPA 1975), and Weil v. Fritz, 572 F.2d 856 (CCPA 1978). It contrasts benefit for priority with benefit under 35 U.S.C. §§ 119 or 120 as applied in In re Lukach, In re Gosteli and In re Wertheim. PRACTICE TIP: When attacking an opponent's priority benefit, first determine the full scope of the count, including every alternative, and put evidence into the record, such as expert analysis of the benefit application's examples and data, showing that no alternative is described and enabled. If you think a narrower embodiment is patentably distinct, file a preliminary motion under 37 CFR § 1.633(c) to narrow the count or add a count. Do not argue that the opponent's own claims lack support, and do not raise new theories for the first time at oral argument.