For a provisional application to qualify as secret prior art under 35 U.S.C. 102(a)(2) or pre-AIA 35 U.S.C. 102(e), it must support the claims of the application or patent asserting priority thereto. Here, for example, an otherwise anticipatory disclosure found in a reference provisional application was found to be ineffective as prior art even though it was the provisional of a duly issued patent because it did not support the claims of that patent. “A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.” It may therefore be best to consider disqualifying a reference provisional application as prior art not only when it does not include the disclosure at issue in the application or patent derived therefrom, but also when that application or patent is directed to a claimed invention outside the scope of the provisional application.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to making molded plastic articles bearing a “lenticular” image. The primary reference patent cited during review was asserted to qualify as prior art by way of its corresponding provisional application, which contained the same allegedly anticipatory disclosure.
Issue(s): Whether the reference patent is entitled to the benefit of its earlier provisional filing date for prior art purposes.
Holding(s): No. “[The challenger] failed to compare the claims of the [reference] patent to the disclosure in the [reference] provisional application. A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. [] As [the challenger] acknowledges, it provided charts to the Board comparing the claims of the [challenged] patent to the disclosure of the [reference] patent and claim 1 of the [challenged] patent to the disclosure of the [reference] provisional application. [] Nowhere, however, does [the challenger] demonstrate support in the [reference] provisional application for the claims of the [reference] patent. That was [the challenger’s] burden. A provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”