Holding: A prior art reference may only claim the priority date of a provisional application for the portions of the prior art reference that have written description support in the provisional application.
US Patent Application 11/005,678 to Riggs et al., pertains to a logistics system and methods for transporting goods from various shippers by different carriers using different modes of transport. The Examiner for this application found some of the claims of the ‘678 Application to be anticipated by US Pat. Pub. No. 2002/0049622 to Lettich and the other claims of the ‘678 Application to be obvious over Lettich in view of another publication. Riggs initially appealed the Examiner’s rejections to the PTAB, and the PTAB reversed the rejections based on the incorrect application of pre-AIA Section 102(e). The Examiner filed a request for rehearing and the PTAB amended its original decision, finding that Lettich was proper prior art. The PTAB reviewed the claims again in view of Lettich and affirmed the anticipation and obviousness rejections.
Riggs argued that the PTAB’s decision to grant the Examiner’s request for rehearing was ultra vires. However, this argument was already made in a previous examination of the ‘678 Application, Odyssey Logistics & Tech. Corp. v. Kappos, 435 F. App’x 954 (Fed. Cir. 2011). Collateral estoppel, or issue preclusion, applies when: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in the prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. In this case, the Federal Circuit found that each element supported application of issue preclusion. In the Odyssey case, the Federal Circuit concluded that an examiner’s request for rehearing of a PTAB decision is an ordinary agency action and not an ultra vires action, and the PTAB may reconsider its decision when the examiner requests rehearing.
Lettich is a published non-provisional application that was filed on April 26, 2001 and claims priority to a provisional application filed on April 27, 2000. The ‘678 Application was filed on December 7, 2004, and claims a priority date of July 28, 2000. The PTAB concluded that for the Lettich publication to be prior art, it was only required that one claim of the Lettich publication had written description support in the Lettich provisional application. The PTAB found support in the provisional application for each limitation of claim 1 of the Lettich publication and then relied on other claims and other portions of the specification to support its rejection.
The Federal Circuit found the PTAB’s finding to be flawed. The Federal Circuit clarified, that the provisional application must provide written description support for the specific portions of the patent specification identified and relied on in the prior art rejection. A prior art publication claiming priority to a provisional application can only use the priority date of the provisional application for the content that is supported by the provisional application. A provisional application becomes public when the corresponding non-provisional application publishes or the patent issues. Therefore, it makes sense to treat a published provisional application as prior art only for the teachings it discloses as of its filing date.
Since the PTAB did not address whether the Lettich provisional application disclosed the subject matter that the Examiner used to reject the ‘678 Application, the Federal Circuit vacated the rejection and remanded to the PTAB for further analysis.
Federal Circuit Precedential 
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