The Court of Appeals for the Federal Circuit’s In Re Riggs Decision: 35 USC 102(e) Prior Art Requires Written Description Support in Provisional Application for Disclosure Relied On to Reject Claims

On March 24, 2025, the US Court of Appeals for the Federal Circuit (Federal Circuit) issued a decision titled In Re: Riggs (the Riggs decision) that vacated a decision of the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO). The PTAB found that a published US patent application qualified as prior art under pre-AIA 35 USC § 102(e) because the underlying provisional patent application supported at least one claim in the published US patent application. In vacating the PTAB decision, the Riggs decision emphasizes another requirement as to when a published US patent application qualifies as prior art as of its claimed priority date. Because the PTAB did not consider the additional requirement, the Federal Circuit remanded the case for further proceedings consistent with its decision.

Procedural History

The PTAB originally heard an appeal of the examiner’s rejection of the claims of US Patent Application No. 11/005,678 (the ’678 application) as anticipated by US Patent Application Publication No. 2002/0049622 A1 (Lettich Application Publication) or obvious in view of the Lettich Application Publication and another prior art reference. The Lettich Application Publication claims priority to and the benefit of the filing date of US Provisional Patent Application No. 60/200,035 (Lettich Provisional Application). The PTAB reversed the rejections but used an incorrect version of 35 USC § 102(e).

The examiner recognized the error and filed a Request for Rehearing before the PTAB. After a district court challenge that was dismissed on appeal, the PTAB took up the Request for Rehearing and agreed with the examiner that the Lettich Application Publication properly qualified as a prior art reference under 35 USC § 102(e). The PTAB then affirmed the examiner’s rejection of the claims.

Appellants appealed the decision of the PTAB. However, in the midst of the appeal, the Federal Circuit granted the USPTO’s motion to vacate and remand to permit the PTAB to consider the Federal Circuit’s decisions in Drinkware¹ and Amgen,² which are relevant to whether a published US patent application qualifies as prior art under 35 USC § 102(e). On remand, the PTAB adopted its previous findings and reasoning, holding that because the Lettich Provisional Application provides adequate support for claim 1 of the Lettich Application Publication, it is prior art under 35 USC § 102(e). Appellants timely appealed   the PTAB decision to the Federal Circuit.

Issues on Appeal

The inventors (Appellants) of the ’678 application raised three issues on appeal. The first issue was an issue preclusion matter, which will not be discussed further here. The second issue was the prior art matter under pre-AIA 35 USC § 102(e) and the subject of this alert. Third, Appellants appealed whether substantial evidence supported the PTAB’s findings of lack of novelty and obviousness. The PTAB did not reach the third issue.

Prior Art Under 35 USC 102(e)

The Federal Circuit addressed whether the Lettich Application Publication, the sole piece of prior art discussed in the Riggs decision, qualifies as prior art under 35 USC § 102(e) and, importantly, whether it is entitled to the filing date of the Lettich Provisional Application to which the Lettich Application Publication claims priority.

The Lettich Application Publication is a nonprovisional patent application that was filed after the filing date of the ’678 application. The Lettich Application Publication claims priority to   the Lettich Provisional Application, which was filed before the filing date of the ’678 application. Accordingly, “whether Lettich [Application Publication] qualifies as prior art under pre-AIA § 102(e) turns on whether Lettich [Application Publication] is entitled to the priority date of the [Lettich Provisional Application].”

In interpreting the statute, the PTAB and the examiner relied on Drinkware, Amgen, and MPEP § 2136.03. Based on their analysis of this case law and the examiner’s manual, the PTAB determined that the Lettich Application Publication qualifies as prior art under 35 USC § 102(e) because at least one claim — i.e.,   claim 1 — of the Lettich Application Publication finds written description support in the Lettich Provisional Application.

However, the Federal Circuit correctly pointed out that MPEP § 2136.03 also requires that “[t]he provisional application must also describe, in compliance with pre-AIA 35 U.S.C. 112, first paragraph, or 35 U.S.C. 112(a), the subject matter relied upon in the reference patent or publication to make the rejection.” The Federal Circuit acknowledged that it has not previously addressed this situation — i.e., where a party challenging the validity of a claim shows support for one claim in the reference publication but then relies on other portions of the reference publication to reject the claim. The Federal Circuit concluded that such a showing is not adequate support under 35 USC § 102(e).

The Riggs decision emphasizes that the priority provisional patent application not only requires support for at least one claim in the reference published application but must also provide written description support for the subject matter in the reference published application relied on to reject the claims at issue. The Federal Circuit rationalized that “[i]t makes no sense to suggest that if a single claim is supported by the provisional application, then everything in the later filed application gets the benefit of the provisional date whether supported or not.” The Federal Circuit reasoned that this extra requirement is logical and consistent with precedent and with MPEP § 2136.03. The Riggs decision further explained that it is best to treat a priority application as a nonprovisional application or patent such that it is “prior art for all that it teaches as of its filing date.”

Turning back to the facts of the case, the Federal Circuit disagreed that the PTAB considered this new requirement. Rather, the Federal Circuit stated that the PTAB did not complete its analysis as to whether the Lettich Application Publication qualifies as prior art under 35 USC § 102(e). Consequently, the case was remanded back to the PTAB to determine whether the Lettich Provisional Application provides written description support for subject matter in the Lettich Application Publication that the examiner is relying on in the prior art rejections.

The Riggs decision is an interesting case of first impression. Provisional patent applications and 35 USC § 102(e) have been around for years, so it seems unusual that the Riggs decision is the first to address whether a priority provisional patent application, the filing date of which   is relied upon as prior art, is required to properly support the sections of the published US nonprovisional patent application used to reject the claims. Nevertheless, it appears that a logical conclusion was reached as to what is adequate support to secure an earlier filing date for 35 USC § 102(e) prior art.

How this finding under pre-AIA 35 USC § 102(e) will apply to post-AIA 35 USC § 102(a)(2) remains uncertain. The pre-AIA statute recites the “invention”; the relevant post-AIA statute recites the “claimed invention.” Whether this language difference will have a bearing on the requirements for the use of prior art under 35 USC § 102(a)(2), the commonsense approach of the Riggs decision should be useful.

 

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^[1] Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015).
^[2] Amgen Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017).

 

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