Adair, Athwal, and Emtage v. Carter and Presta

"To overcome a [35 U.S.C.] § 135(b)(1) bar for a post-critical date claim, an applicant must show that such claim is not materially different from a pre-critical date claim present in the application… to obtain the benefit of the earlier filing date.”

Adair, Athwal, and Emtage (collectively, “Adair”) appealed the decision of the Board of Patent Appeals Interferences (“Board”) holding that the single claim of U.S. Application Serial No. 11/284,261 (“’261 Application”) was barred under 35 U.S.C. § 135(b)(1). The Court of Appeals for the Federal Circuit agreed with the Board holding that the claim was barred. Adair attempted to overcome the one-year bar of 35 U.S.C. § 135(b)(1) by claiming benefit of earlier applications. The Court of Appeals held that Adair’s ‘261 Application was not entitled to benefit of the earlier applications due to material differences from the earlier applications. The Court of Appeals stated that “an applicant must show that such claim is not materially different from a pre-critical date claim present in the application… to obtain the benefit of the earlier filing date.” AFFIRMED.