In this past Friday's decision in Ex parte Bass, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 112, first paragraph, rejection. As a Patent Lawyer practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be reversed on appeal.
Agilent Technologies' patent claim was directed to an apparatus for preparing an array of chemical compounds on a surface. Representative claims 1 recited a gap between two surfaces, wherein the width of the gap was sufficient for gas to flow along the gap so as to create an aerodynamic seal between the two surfaces. Appellant's specification did not describe the dimensions of the gap sufficient to create an aerodynamic seal. The Examiner's position on the 35 U.S.C. sec. 112, first paragraph, rejection was that the Appellant did not provide written descriptive support for the gap. The BPAI disagreed.
First, the Examiner must provide an adequate showing regarding persons skilled in the art. The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). The Examiner provided no such argument - he simply argued that Appellant did not describe a gap width sufficient for forming an aerodynamic seal. The Examiner provided no evidentiary support and provided no reasoning regarding POSITA. The lack of the required showing weighed against the Examiner's rejection.
Second, the Examiner erred in concluding that Appellant did not provide written descriptive support for the gap. "In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue." Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). A disclosure provides adequate written description if it conveys with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. Although the Appellant didn't explicitly state the dimensions of the gap, there was enough written descriptive support surrounding the gap to adequately describe it. Specifically, the BPAI stated: "As Appellants' Specification discloses an aerodynamic seal between two elements is realized by introducing a gas into the gap between the two elements and that the pressure of the gas introduced into the gap is dependent upon, inter alia, the size of the gap." Thus, the disclosure that the gap depended on another attribute, was at least enough to describe the gap to comply with 35 U.S.C. sec. 112, first paragraph.
The moral of the story here is that an Examiner's 35 U.S.C. sec. 112, first paragraph, rejection must be closely reviewed to make sure that he provides an adequate showing regarding persons skilled in the art and/or evidentiary support for this argument. Further, the rejection should not rest on the argument that the specification does not explicitly define or describe an attribute, since "the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue."
