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In an interference proceeding, Bamberg copied Dalvey’s claims to invoke the interference.  The claims involved the method of transferring printed images onto dark colored textiles by ironing over a specialty transfer paper.  The copied claims required a white layer on the transfer paper, but did not specify a temperature at which the white layer melts.  The specification of the Bamberg application only disclosed melting at temperatures above 220°C and it disparaged white layers that melted below 220°C as producing an “undesired” result.  On the other hand, Dalvey’s specification disclosed melting temperatures as low as 20°C.  In interferences, when utilizing the broadest reasonable interpretation standard, the PTO is required to use the specification of the patent from which the claims were copied when determining that construction.  Here, the claims were not limited to 220°C, as Bamberg argued, and therefore, because he limited his disclosure in the specification to melting points of 220°C and above, he could not support the copied claims, which allowed for lower melting points. 

Bamberg further appealed the PTAB’s decision refusing to allow Bamberg to amend his claims.  The PTO rule in interference cases (37 C.F.R. § 41.110(c)) is that a motion to amend a claim must be accompanied by a claim chart showing the written description in the specification that supports each limitation.  Here, Bamberg failed to provide such a claim chart and therefore he did not meet its burden for amending its claims. 

Bamberg v. Dalvey, Case No. 2015-1548 (March 9, 2016); Opinion by: Hughes, joined by Moore and Stoll; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.

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