Q) ABC and XYZ Corps. – Appeal (10.00.2a)

2. On December 31, 1998, Sam Practitioner files a notice of appeal in a patent application
assigned to ABC Corp. after the examiner has rejected all of the claims on prior art. Within two
months he sends in his appeal brief and three months after the examiner’s answer is filed the case
is sent to the Board of Patent Appeals and Interferences (Board). Subsequently, while reading
the Official Gazette Sam notices that a patent issued to XYZ Corp. on October 26, 1999,
contains claims which read on an unclaimed embodiment in the ABC application, which is an
invention that is not within the scope of the invention claimed in the ABC application. The ABC
application was filed one month after the issuance of the XYZ patent. Upon learning of the XYZ
patent, ABC Corp. wants to provoke an interference by adding additional claims to its
application relating to the previously unclaimed embodiment. It is October 18, 2000 and Sam
comes to you for advice. Which of the following is the best and correct course of action?
(A) Since the ABC application is at the Board of Patent Appeals and Interferences
already, Sam need only request that the case be transferred to the Interference part
of the Board where an interference can be declared between the ABC application
and the XYZ patent.
(B) Sam should file an amendment adding the claims copied from the XYZ patent and
the Board is required to enter the amendment.
(C) Sam should promptly file an amendment containing the claims copied from the
XYZ patent and request entry. If the Board declines to enter the amendment, Sam
should file a separate, continuation application no later than October 26, 2000,
containing the claims copied from the XYZ patent as well as claims previously
appealed, and then, to avoid the rendering of a decision of the Board, he should
promptly inform the clerk of the Board in writing that they have decided to refile
and abandon the application containing an appeal waiting a decision.
(D) Sam should file an amendment containing the claims copied from the XYZ patent
and ask that the interference between the ABC application and the XYZ patent be
considered while the case is at the Board.
(E) Sam should wait until the appeal is decided before filing an amendment to
incorporate claims copied from the XYZ patent and to provoke an interference.
There is no benefit to filing new claims since only allowable claims will be
considered during an interference.

2. ANSWER: (C). 35 U.S.C. § 135(b) requires that the claim be made in the ABC patent
within one year of the issuance of the XYZ patent. MPEP § 1211.01 states that there is no
obligation resting on the Board to consider new or amended claims submitted while the case is
on appeal. MPEP § 1210 states that when an application is refiled, the Board should be promptly
notified. Failure to notify the Board may result in the Board’s refusing an otherwise proper
request to vacate its decision. See also MPEP § 2307.03. (E) is incorrect as 35 U.S.C. § 135(b)
requires the claim to be made within one year. (D) is incorrect because the Board may refuse the
amendment and because the claims have not yet been determined to be allowable. Note that the
XYZ patent was filed before the ABC application and is therefore prior art under 35 U.S.C. §
102(e). See MPEP § 2306 and 2307.02. (A) is incorrect because the claims are not in the
application, no interference could be declared and such a “transfer” is not feasible. (B) is
incorrect because the Board is not required to enter the amendment and Sam may forfeit his
opportunity to present the claims within one year if he does not act promptly (as in answer (C)).