from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/002, 001.
A. M. Chambers, Porzio, Bromberg & Newman, PC,
Washington, DC, argued for appellant. Also represented by
Richard J. Oparil, Kevin M. Bell, Billy Dell Chism; Matthew
Zapadka, Bass, Berry & Sims, PLC, Washington, DC.
L. Kelly, Office of the Solicitor, United States Patent and
Trademark Office, Alexandria, VA, argued for intervenor. Also
represented by Thomas W. Krause, Robert J. McManus, Amy J.
Prost, Chief Judge, Moore and Reyna, Circuit Judges.
Distributors, LLC ("Woodbolt") requested that the
United States Patent and Trademark Office ("PTO")
reexamine U.S. Patent No. 8, 067, 381 ("the ʼ381
patent") owned by Natural Alternatives International,
Inc. ("NAI"). The PTO ordered inter partes
reexamination, and the examiner rejected the challenged
claims as anticipated by or obvious over cited prior art,
including a parent of the reexamined patent. NAI appeals the
Patent Trial and Appeal Board's ("Board") final
determination affirming the examiner's rejections and its
subsequent denial of NAI's request for rehearing.
Woodbolt is not a party to this appeal. The Director of the
PTO has intervened to defend the Board's decision. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
1997 and 2011, NAI filed a chain of eight U.S. patent
applications generally directed to increasing athletes'
endurance. The eighth application matured into the ʼ381
patent, the subject of this appeal. NAI filed the first
application in the chain on August 12, 1997, and within five
years, it had filed three more. In each such continuing
application, NAI included a priority benefit statement under
35 U.S.C. § 120 claiming priority back to the filing
date of the first U.S. application, which eventually issued
on October 12, 1999, as U.S. Patent No. 5, 965, 596
("the ʼ596 patent"). NAI also filed a provisional
application ("the 2003 provisional application") on
April 10, 2003, while the fourth application was still
pending before the PTO. Before the fourth application issued
on January 20, 2004, NAI filed the fifth application, a
continuation-in-part, on November 18, 2003. The fifth
application claimed priority to the fourth through first
applications and to the 2003 provisional application.
Intervenor's Br. 4-5. NAI filed its sixth application on
August 29, 2008, during the fifth application's pendency.
At that time, the sixth application correctly claimed
priority to the fifth application, and the fifth application
correctly claimed priority to the fourth application, and so
September 2, 2008, just four days after filing its sixth
application, NAI amended the "Cross Reference of Related
Applications" section of the fifth application to delete
the benefit claim to the fourth through the first
applications and to claim priority under 35 U.S.C. §
119(e) to only the 2003 provisional application. J.A. 8035;
see 35 U.S.C. § 119(e) (governing claiming
priority to an earlier-filed provisional application). Thus,
when the fifth application issued as U.S. Patent No. 7, 504,
376 ("the ʼ376 patent") on March 17, 2009, it
claimed the benefit of only the 2003 provisional
application's filing date. The sixth through the eighth
applications subsequently issued as patents, but with a
statement seeking the benefit of the fifth through the first
applications, in addition to the 2003 provisional
application. The ʼ381 patent on appeal here issued from
the eighth application on November 29, 2011.
court litigation involving the ʼ381 patent commenced
between NAI and Woodbolt in December 2011. In May 2012,
during that proceeding, Woodbolt sought inter partes
reexamination of the asserted patent claims. The request
alleged that "the asserted claim to priority of the
ʼ381 Patent is defective" because the
"applicants deliberately and expressly terminated their
claim to the priority of the first four applications[,
]" which thus "broke the chain of priority
between the Fourth and Fifth Applications." J.A. 45-46.
During reexamination, NAI did not dispute that it had waived
priority to the fourth through the first applications in its
fifth application. J.A. 971. But it insisted that the sixth
application maintained priority back to the first application
because NAI did not amend the "Cross Reference of
Related Applications" in the sixth application.
According to NAI, it was irrelevant what happened to the
fifth application once the sixth application became entitled
to the first application's filing date. J.A. 975.
Unpersuaded, the examiner finally rejected the reexamined
claims in view of prior art including the ʼ596 patent
(i.e., the patent that issued from the first application),
and then closed prosecution. J.A. 1210, 1226.
appealed the examiner's decision to the Board. The Board
determined that when NAI filed the eighth application,
"[t]he fifth application [was] not entitled to the
benefit of the fourth application since the specific
reference to the fourth application was deleted in the
fifth." J.A. 13. Because the eighth application claimed
priority to the first application via the fifth application,
the Board determined that the eighth application (and thus
the ʼ381 patent) was also not entitled to the benefit of
the fourth through the first applications. See J.A.
16. The Board issued a final written determination affirming
the examiner's rejections and denied NAI's request
challenges the Board's priority
determination.According to NAI, the Board erred by
denying the ʼ381 patent priority back to the first U.S.
application in the ...