Hollmer v. Harari

When inquiring into the continuity of multiple patent applications, the adequacy of an incorporation by reference is determined by the reasonable person of ordinary skill in the art standard.

Opinion (Prost): Hollmer appealed the Board of Patent Appeals’s (Board) decision that Harari’s Patent Application 09/310,880 (’880) was entitled to the filing date of Harari’s earlier 07/337,566 (’566) application, which preceded the date of conception for Hollmer’s Patent No. 5,828,601. The ’880 application was the most recent part of a chain of patent applications filed by Harari, stretching back to the ’566 application filed on April 13, 1989. The ’566 application was filed on the same day as another application, No. 07/337,579 (’579), also by Harari, and was incorporated by reference into the ’566 application. Harari’s later applications included the same language used in the ’566 application, referencing the ’579 application by specifying that application’s title, inventor name, and by indicating the ’579 application’s filing date as “the same day as the present application.” Hollmer argued that the later applications in the ’566 to ’880 chain were ambiguous, because, for two of those applications, the reference to ’579 could have referred to other applications. The Board found the references not ambiguous, because a reasonable patent examiner could have correctly determined that the applications in question referred to the ’579 application. The Federal Circuit disagreed, holding that the correct standard was whether a reasonable person of ordinary skill in the art could have determined what application was referenced. The court determined that the incorporation by reference statement in two of the applications in the chain were ambiguous, REVERSING the Board, and giving the ’880 application the effective date of the immediately prior application in the chain (Dec. 20, 1996).