In re Gosteli - Case Brief
In re Gosteli, 872 F.2d 1008 (Fed. Cir. 1989).
Facts:
Gosteli filed a patent application with claims directed to Markush groups and dependent claims disclosing specific compounds used in the synthesis of antibiotics. The examiner rejected the claims under 102(e) as anticipated by two compounds disclosed but not claimed in United States Patent No. 4,155,912 by Menard.
Gosteli claimed the benefit of the foreign priority date of a patent application filed in Luxembourg that disclosed the two compounds of the Menard patent. The Menard patent would not have been an effective reference under 102(e) if Gosteli were entitled to the priority date of the Luxembourg patent application.
On appeal to the Board of Patent Appeals and Interferences, the Board upheld the examiner’s rejection and denied Gosteli the benefit of the filing date of the Luxembourg patent application. The Board reasoned that because the claims at issue contained additional subject matter not disclosed in the Luxembourg patent application, the claims in the US patent application were not the “same invention” as required under 35 USC 112. The court held that the effective priority date was the filing date of the US patent application because the Luxembourg application did not provide a written description of the entire scope of the claims at issue.
Issues:
1) Are patent claims entitled to the benefit of their foreign priority date only if the foreign patent application provides adequate support for the entire scope of the claims as required under 35 USC 112?
2) May an applicant use a reduction to practice outside the US to swear behind a prior art reference under 37 CFR 1.131(a)?
Holding:
1) Yes. The priority date of the earlier filed foreign application is available only if the foreign application provides adequate support for the claims in the US patent application.
2) No. An applicant may only use activity within the United States as a basis for swearing behind a prior art reference under 37 CFR 1.131(a).
Disposition: Affirmed.