A Distinction Without A Difference

Adele Critchley | March 21, 2016

Ulf Bamberg, Peter Kummer, Ilona Stiburek v. Jodi A. Dalvey, Nabil F. Nasser

March 9, 2016

Before Moore, Hughes and Stoll.  Opinion by Hughes.


The CAFC upheld the Board’s decision that the Bamberg claims were correctly interpreted in light of the Dalvey patents from which they were copied, and functional limitations were not improperly imported.

The CAFC upheld that, in light of the claim interpretation, the Bamberg specification failed to provide adequate written description.

The CAFC found that the Board did not err in denying Bamberg’s motion to amend the claim set due to a lack of claim chart.


This case arose out of interference proceeding No. 105,964, and the claims at issue originated from four Dalvey patents issued between July 6, 2010, and April 22, 2014, which all claimed priority to an application filed September 9, 1999. The patents were related to method for transferring printed images onto dark colored textiles by ironing over transfer paper. The transfer paper comprised (i) a removable substrate coated with silicon, (ii) a hot-melt adhesive, (iii) a white layer, and (iv) an ink-receptive layer.

Bamberg considered that it had earlier invented the claimed method, and so copied the Dalvey claims asserting priority from an international application filed under the PCT on June 1, 1999 to provoke an interference.

The Board declared Bamberg the senior party and thus, Dalvey as the junior party were required to prove an earlier priority date by a preponderance of the evidence.

During the interference proceedings, Dalvey alleged that Bamberg’s claims were unpatentable due to a lack of written description. Specifically, Dalvey argued that the copied claims recited a white layer that melts at a wide range of temperatures, but Bamberg’s specification only discloses a white layer that does not melt at ironing temperatures, i.e., below 220°C.

The Board reviewed the claims and concluded that they were not limited to a white layer that melts at or above 220°C but can include a white layer that melts below 220°C. Bamberg urged the CAFC to find that the Board erred in its claim construction by improperly importing a functional limitation requiring that the white layer melt below 220°C.

The CAFC held that because this is an interference and Bamberg copied Dalvey’s claims, the claims are given their broadest reasonable interpretation in light of the Dalvey specification. When the contested claims are analyzed based on Dalvey’s specification, it can be concluded that the white layer does not have a minimum melting temperature. For instance, Dalvey’s specification discloses embodiments in which the white layer melts at a number of different temperatures, including 200°F, 225°F, 250°F, 300°F, 350°F and 400°F, and further discloses that the white layer exhibits a melt point from 20°C up to 225°C. Therefore, the CAFC found no error in the Board’s conclusion that a white layer having a melt temperature both above and below 220°C is within the scope of the contested claims.

Next, Bamberg disputed the Board’s finding that their specification failed to support the contested claims.

It was held that Bamberg’s specification makes clear that the white layer which comprises elastic plastics “must not melt at ironing temperatures.” Further, Bamberg testified that “we came to understand that clarity and resolution are decreased where the white background layer is permitted to melt… Accordingly, we developed a white background layer that nonetheless formed a strong bind with the ink-receiving layer but did not melt at conventional iron-pressing temperatures (i.e., that is temperatures up to about 220°C).”

The CAFC cited Tronzo v. Biomet wherein the court had determined that the asserted claims could not claim priority to the parent patent because it did not provide written description support as it described only a conically shaped cup and specifically distinguished the prior art (i.e., other shaped) as inferior by detailing the advantages of the conically shaped cup.

Bamberg argued to distinguish the present case over Tronzo by asserting that its specification does not distinguish the prior art as “inferior” but simply as “undesired.” Bamberg argued that one reasonably skilled in the art would understand that one “could have a layer that melted, but it may not be as good.”

The CAFC held this was a distinction without a difference. The CAFC was “not persuaded by the assertion that one skilled in the art would understand that an inventor possesses something that it deems undesirable, but not something that it deems inferior.” The CAFC held that Bamberg did not possess a white layer that melted below 220°C because it specifically distinguished white layers that melted below 220°C as producing an undesired result.

Therefore, the CAFC concluded that Bamberg’s specification fails to meet the written description requirement of 35 U.S.C. §112.

Finally, Bamberg appealed the Board’s denial of its motion to amend the claims. However, the CAFC held that the burden to establish that an amended or new claim is supported by an adequate written description is on the party seeking to add or amend and that the PTO has determined that in the context of interference proceedings this burden is best satisfied with a claim chart.

Bamberg did not provide a claim chart, and did not satisfy its burden. Accordingly, the CAFC upheld the Board’s decision to deny Bamberg’s motion to amend.

Prosecution Takeaway:

Continued attention to the written description and clarity issues when preparing an application and during prosecution is critical. For example, while the CAFC agreed that “an inventor aware of an “undesired” embodiment theoretically could possess that invention, perhaps by including it in the description of a preferred embodiment in the specification, [the CAFC held this] is not the question. For purposes of the written description requirement, “the subject matter of the counts [must] be described sufficiently to show that the applicant was in possession of the invention.” Accordingly, there may be risk in providing subjective evaluations in the original description of examples that are not known in prior art, which can end in narrowing the interpretation of claim language and/or generating estoppel.

Full Opinion

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