February 13, 2017

The Removal of Matter from the Provisional Application is Significant to the Interpretation of the Claims in the Non-Provisional Application

By Bryan K. Wheelock, Principal

In MPHJ Technology Investments, LLC. v. Ricoh Americas Corp., [2016-1243] (February 13, 2016), the Federal Circuit affirmed the PTAB decision that claims 1-8 of U.S. Patent No. 8,488,173 were invalid on the grounds of anticipation or obviousness.

On appeal MPHJ argued that “interfacing” and “Go button” were single step operations, and that the PTAB erred in construing these claim elements as not limited to single-step operations.  MPHJ was relying upon portions of its prior provisional application, which Ricoh pointed out were omitted from the final regular utility application.  MPHJ responded that these omitted sections were not explicitly disclaimed, and therefore that they are part of the prosecution history and are properly relied on to explain and limit the claims, even if the passages do not appear in the issued patent.

The Federal Circuit agreed that a provisional application can contribute to understanding the claims, but found that it was the deletion from the provisional application that contributes understanding of the intended scope of the final application.  The Federal Circuit concluded that a person of skill in this field would deem the removal of these limiting clauses to be significant.  The Federal Circuit noted that the ’173 Patent in its final form contains no statement or suggestion of an intent to limit the claims to the deleted one-step operation.  Neither the specification nor the claims state that this limited scope is the only intended scope.  Instead, the ’173 Patent describes the single step operation as “optional.”

Based upon this construction, the Federal Circuit affirmed that the claims were anticipated or obvious over the prior art.