Wednesday, November 13, 2013

In re Gosteli case brief

In re Gosteli case brief summary
872 F.2d 1008 (1989)

Appellant patent applicants sought review of the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences, which affirmed the patent examiner's final rejection of several claims in the patent application of appellants as being anticipated by a prior patent.

Appellants filed a patent application for a chemical compound. The examiner rejected claims 48-51 as being anticipated by a prior patent (patent M). Appellants attempted to antedate patent M by claiming, under 35 U.S.C.S. § 119, the priority date of their foreign patent. The Board rejected this claim because appellants' foreign priority application did not disclose the same invention, as required by 35 U.S.C.S. § 112. Appellants also attempted to use 37 C.F.R. § 1.131 to swear behind patent M. The Board rejected this claim because appellants did not show they completed their invention in the United States before patent M's filing date.


  • On appeal, the court found that the written description in the foreign patent application was insufficient to allow a person skilled in the art to recognize that appellants invented what they claimed. 
  • Therefore, the court concluded that appellants failed to antedate patent M and affirmed the Board's decision.

The decision was affirmed because appellants' prior foreign patent application did not disclose the same invention in appellants' United States patent application claims.

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