United States Court of Appeals 

for the Federal Circuit ______________________ 

ULF BAMBERG, PETER KUMMER, 

ILONA STIBUREK,

Appellants

v.

JODI A. DALVEY, NABIL F. NASSER,

Appellees

______________________ 

2015-1548

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. 105,961, 

105,964, 105,966.

______________________ 

Decided: March 9, 2016

______________________ 

 STEPHEN HOLMES, Barlow, Josephs & Holmes, Ltd., 

Providence, RI, argued for appellants. Also represented by 

JOSHUA A. STOCKWELL; KURT JOHN NIEDERLUECKE, LAURA 

LYNN MYERS, Fredrikson & Byron, PA, Minneapolis, MN.

 DEVAN V. PADMANABHAN, Winthrop & Weinstine,

P.A., Minneapolis, MN, argued for appellees. Also represented by PAUL J. ROBBENNOLT, NATHAN J. WITZANY. 

______________________ 

Before MOORE, HUGHES, and STOLL, Circuit Judges.
2 BAMBERG v. DALVEY

HUGHES, Circuit Judge.

Ulf Bamberg, Peter Kummer, and Ilona Stiburek appeal from the Patent Trial and Appeal Board’s consolidated interference proceeding decision refusing to allow the 

claims of four patent applications because the specification failed to meet the written description requirement of 

35 U.S.C. § 112. Because the Board properly construed 

the claims and substantial evidence supports the Board’s 

determination that Bamberg failed to meet the written 

description requirement, and because it was not an abuse 

of discretion to deny Bamberg’s motion to amend, we 

affirm. 

I 

This case arises out of consolidated interference proceeding No. 105,964 between Ulf Bamberg, Peter Kummer, and Ilona Stiburek (collectively, Bamberg) and Jodi 

A. Dalvey and Nabil F. Nasser (collectively, Dalvey). The 

claims at issue originated in four Dalvey patents issued 

between July 6, 2010, and April 22, 2014, which all claim 

priority to an application filed September 9, 1999. 

Bamberg, believing that they had earlier invented the 

claimed methods, intentionally copied the Dalvey claims 

into four patent applications to provoke an interference. 

Bamberg’s applications claim priority to an international 

application filed under the Patent Cooperation Treaty 

(PCT) on June 1, 1999. To determine which party had 

priority of inventorship, the Board declared three interferences on September 26, 2013.1 The Board declared 

Bamberg the senior party to the interference under 37 

C.F.R. § 2.96. As the junior party, Dalvey was required to 

prove an earlier priority date by a preponderance of the 

evidence. 

 

1 The three interferences were subsequently consolidated into one, No. 105,964.
BAMBERG v. DALVEY 3

The involved claims disclose a method for the transfer 

of printed images onto dark colored textiles by ironing 

over a specialty transfer paper. The transfer paper generally contains: (1) a removable substrate coated with 

silicon, (2) a hot-melt adhesive, (3) a white layer, and (4) 

an ink-receptive layer. To use the transfer sheet, an 

image is first printed on the ink-receptive layer. The 

removable substrate is then peeled off and the remaining 

portion (the hot-melt adhesive, white layer, and the inkreceptive layer) is placed on the dark textile with the 

printed ink-receptive layer facing up. The user then 

places the removable substrate over the ink-receptive 

layer and applies heat with an iron which melts the hotmelt layer causing the white layer and the ink-receptive 

layer to adhere to the dark textile. 

During the interference proceeding, Dalvey filed a 

motion alleging that Bamberg’s claims were unpatentable 

for lack of written description, as required by 35 U.S.C.

§ 112. Dalvey alleged that the copied claims recite 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). Therefore, Dalvey argued that Bamberg’s specification failed to meet the written description requirement 

because it does not disclose an invention in which the 

white layer melts at temperatures below 220°C. 

Pursuant to Agilent Technologies, Inc. v. Affymetrix, 

Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009), the Board 

reviewed the claims in light of the Dalvey patent specification and concluded that the claims were not limited to a 

white layer that melts at or above 220°C, but rather the 

claims also include within their scope a white layer that 

melts below 220°C. After reviewing Bamberg’s specifications, the Board granted Dalvey’s motion, finding that

Bamberg failed to provide an adequate written description of a white layer that melts below 220°C. Because the 

written description requirement is a threshold issue, the 
4 BAMBERG v. DALVEY

Board did not decide Dalvey’s remaining motions. See 37 

CFR § 41.201(2)(ii). The Board also denied Bamberg’s 

motion to amend because Bamberg failed to provide a 

claim chart as required by 37 C.F.R. § 41.110(c)(2). 

Bamberg appeals. We have jurisdiction under 28 

U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141.

II

Bamberg urges us to find that the Board erred in its 

claim construction by improperly importing a functional 

limitation requiring the white layer to melt below 220°C. 

We review underlying factual determinations concerning 

extrinsic evidence for substantial evidence and the ultimate construction of the claims de novo. Teva Pharm. 

U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015). 

Because this is an interference, and Bamberg copied 

Dalvey’s claims, we give the claims their broadest reasonable construction in light of the Dalvey specification. Harari v. Lee, 656 F.3d 1331, 1340 (Fed. Cir. 2011); 

see also Agilent Techs., Inc., 567 F.3d at 1375 (“[W]hen a 

party challenges written description support for an interference count or the copied claim in an interference, the 

originating disclosure provides the meaning of the pertinent claim language.”); In re Spina, 975 F.2d 854, 856 

(Fed. Cir. 1992) (“When interpretation is required of a 

claim that is copied for interference purposes, the copied 

claim is viewed in the context of the patent from which it 

was copied.”). “[U]nder the broadest reasonable interpretation, the Board’s construction cannot be divorced from 

the specification and the record evidence, and must be 

consistent with the one that those skilled in the art would 

reach.” Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 

1298 (Fed. Cir. 2015) (internal quotations and citations 

omitted). 

The Board analyzed the scope of the contested claims 

based on Dalvey’s specification and concluded that the 
BAMBERG v. DALVEY 5

“white layer” does not have a minimum melting temperature. See J.A. 21. Bamberg asserts that the Board improperly imported a limitation into the claims and, 

instead, the Board should have concluded that the “white 

layer” is simply “a white layer that remains opaque after 

application.” Pet. Br. 18. 

Dalvey’s specification defines “white layer” as “a layer 

on a transfer sheet positioned between a release layer and 

a receiving layer. The white layer imparts a white background on a dark substrate.” U.S. Patent No. 7,749,581, 

col. 3 ll. 32–36. The specification discloses embodiments 

in which the white layer melts at a number of different 

temperatures. Id. at col. 10 l. 65 – col. 11 l. 5 (“Heat 850 

was applied to the peeled printed layers 820 and the 

release paper 852. The heat 850 was applied at 200 F, 225 

F, 250 F, 300 F, 350 F, and 400 F. A good image transfer 

was observed for all of these temperatures.”);2 id. at col. 6 

ll. 32–37 (“When heat is applied to the image transfer 

sheet . . . [the white layer] exhibit[s] a melt point from 

20°C up to 225°C”); id. at col. 7 ll. 14–15 (“The LDPE 

polymer of the [white layer] melts at a point within a 

range of 43°–300°C.”). We find no error in the Board’s 

conclusion that the broadest reasonable interpretation of

“white layer” includes within its scope a white layer that 

melts at temperatures both above and below 220°C.

III

Bamberg disputes the Board’s determination that the 

specification failed to provide adequate written support 

under 35 U.S.C. § 112. To satisfy the written description 

requirement under 35 U.S.C. § 112, the specification must 

sufficiently describe an invention understandable to a 

person of ordinary skill in the art and “show that the 

 

2 200°F ≈ 93°C; 225°F ≈ 107°C; 250°F ≈ 121°C; 

300°F ≈ 148°C; 350°F ≈ 177°C; 400°F ≈ 204°C. 
6 BAMBERG v. DALVEY

inventor actually invented the invention claimed.” Ariad 

Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. 

Cir. 2010) (en banc). In other words, “the applicant must 

‘convey with reasonable clarity to those skilled in the art 

that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate that by disclosure 

in the specification of the patent.” Carnegie Mellon Univ. 

v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 

2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 

1563–64 (Fed. Cir. 1991)). Satisfying the written description requirement is a question of fact that we review for 

substantial evidence. Harari, 656 F.3d at 1341 (citing 

Chen v. Bouchard, 347 F.3d 1299, 1304 (Fed. Cir. 2003)). 

Because the contested claims are properly construed 

in light of Dalvey’s specification to encompass a white 

layer that melts above and below 220°C, Bamberg’s 

specification must also support a white layer that melts 

above and below 220°C to satisfy the written description 

requirement. Substantial evidence supports the Board’s 

determination that Bamberg’s specification fails to meet 

the written description requirement. 

The white background layer in Bamberg’s specification “comprises or is composed of permanently elastic 

plastics which are non-fusible at ironing temperatures 

(i.e. up to about 220°C) and which are filled with white 

pigments—also non-fusible (up to about 220°C).” J.A. 

1390–91. The specification clarifies that the “elastic 

plastics must not melt at ironing temperatures in order 

not to provide with the adhesive layer . . . an undesired 

mixture with impaired (adhesive and covering) properties.” Id. at 1391. Additionally, Ulf 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] tempera-
BAMBERG v. DALVEY 7

tures up to about 220°C).” Id. at 1911 (alterations in 

original). 

In Tronzo v. Biomet, Inc., this court determined that 

the asserted claims of the patent at issue, which described 

a generic-shaped cup hip implant, were invalid because 

these claims could not claim priority to the parent patent 

and, without that priority date, they were anticipated by 

intervening prior art. 156 F.3d 1154 (Fed. Cir. 1998). We 

determined that the asserted claims could not claim 

priority to the parent patent because it did not provide 

written description support where it described only a 

conically shaped cup and specifically distinguished the 

prior art (i.e., other shapes) as “inferior” by detailing the 

advantages of the conically shaped cup. Id. at 1158–59. 

Because the specification detailed why the prior art was 

inferior, the court determined that the patent “discloses 

only conical shaped cups and nothing broader.” Id. at 

1159. 

Bamberg attempts to distinguish Tronzo by arguing 

that its specification does not distinguish the prior art as 

“inferior” but simply claims that a melting white layer is 

“undesired.” J.A. 1391. Bamberg asserts that it meets 

the written description requirement because it “obviously 

had an embodiment that did melt,” and therefore one 

reasonably skilled in the art would understand that one 

“could have a layer that melted, but it may not be as 

good.” Oral Argument at 10:51–58, 13:35–44, 

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

15-1548.mp3. But there is insufficient evidence in the 

record to support such a conclusion or to overcome the 

deferential standard of review on appeal. 

Moreover, this is a distinction without a difference. 

We are 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. An inventor aware of an “unde-
8 BAMBERG v. DALVEY

sired” embodiment theoretically could possess that invention, perhaps by including it in the description of a preferred embodiment in the specification. But that 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.” Goeddel v. Sugano, 617 F.3d 

1350, 1356 (Fed. Cir. 2010). 

Consequently, like in Tronzo, we find that Bamberg 

does not possess a white layer that melts below 220°C 

because it specifically distinguished white layers that 

melt below 220°C as producing an “undesired” result. Cf. 

Tronzo, 156 F.3d at 1159 (Statements that the prior art is 

“inferior” “make clear that the [parent patent] discloses 

only conical shaped cups and nothing broader.”). Even

Mr. Bamberg’s testimony confirms that his invention did 

not include a white layer that melted below a threshold of 

220°C so as to not decrease the clarity and resolution of 

the final image. 

Because substantial evidence supports the Board’s 

conclusion that Bamberg did not possess a white layer 

that melts below 220°C, Bamberg’s specification fails to 

meet the written description requirement of 35 U.S.C. 

§ 112. 

IV

Finally, Bamberg appeals the Board’s denial of its motion to amend. During the interference proceeding, Bamberg moved to amend the claims of its applications in 

response to Dalvey’s motion alleging lack of written 

description support. The Board denied the motion. 

A party seeking to add or amend a claim has the burden of establishing that the amended or new claim is 

supported by an adequate written description. See 37 

C.F.R. § 41.121(b) (“The party filing the motion has the 

burden of proof to establish that it is entitled to the 
BAMBERG v. DALVEY 9

requested relief.”). The PTO has determined that, in the 

context of interference proceedings, this burden is best 

satisfied with a claim chart. 37 C.F.R. § 41.110(c) (“Any 

motion to add or amend a claim must include: (1) A clean 

copy of the claim, (2) A claim chart showing where the 

disclosure of the patent or application provides written 

description of the subject matter of the claim, and 

(3) Where applicable, a copy of the claims annotated . . . .”). 

We review a Board decision “pursuant to the permissive rules governing a patent interference proceeding for 

abuse of discretion.” Koninklijke Philips Elecs. N.V. v. 

Cardiac Sci. Operating Co., 590 F.3d 1326, 1334 (Fed. Cir. 

2010) (quoting Eli Lilly & Co. v. Bd. of Regents of the 

Univ. of Wash., 334 F.3d 1264, 1266 (Fed. Cir. 2003)). 

“An abuse of discretion occurs if the decision (1) is clearly 

unreasonable, arbitrary, or fanciful; (2) is based on an 

erroneous conclusion of law; (3) rests on clearly erroneous 

fact findings; or (4) involves a record that contains no 

evidence on which the Board could rationally base its 

decision.” Id. (quoting Eli Lilly, 334 F.3d at 1266–67). 

Here, Bamberg did not provide a claim chart—the 

principal means for determining if Bamberg satisfied its

burden of establishing that the proposed amended claims

were supported by an adequate written description—and 

thus failed to comply with the regulations governing 

interference proceedings. See 37 C.F.R. § 41.110(c). The 

Board denied the motion after concluding that Bamberg’s 

failure to provide a claim chart improperly shifted to 

Dalvey the burden of establishing that the amended claim

is not supported by an adequate written description. See 

37 C.F.R. § 41.121(b). We find that the Board’s decision 

to deny the motion for failing to comply with its interference regulations, which improperly shifted the burden, is 

not an abuse of discretion. 
10 BAMBERG v. DALVEY

V 

We have reviewed Bamberg’s remaining arguments 

and find them unpersuasive. For the foregoing reasons, 

we affirm the Board’s decision cancelling the claims of 

Bamberg’s patent applications for failure to meet the 

written description requirement of 35 U.S.C. § 112, and 

its denial of Bamberg’s motion to amend. 

AFFIRMED