Florida Patent Lawyer Blog

The case of Ex Parte Lin involved a photolithography invention. The Examiner rejected the claims under the 1st paragraph of 35 U.S.C. § 112 for failing to comply with the enablement requirement. According to the Examiner, the Specification disclosure would not enable a person with ordinary skill in this art (POSITA) to make or use, without undue experimentation, a "photomask with wavelength-reducing material throughout the full scope of the claimed refractive index range."

Appellants argued that an artisan could make or use the photomasks because a paragraph of their specification disclosed specific wavelength-reducing materials which are known in the art to have a refractive index larger than 1.

The Board rejected this argumment, stating:

The deficiency of this argument is that it fails to address with any reasonable specificity the issue raised by the Examiner's rejection. Contrary to Appellants' belief, the issue under consideration is not whether specific wavelength-reducing materials disclosed in the Specification have a refractive index larger than 1. ... Rather, the issue before us is whether the Specification would enable an artisan to make and use, without undue experimentation, a photomask with wavelength-reducing materials throughout the claimed refractive index ... See In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (the specification must teach those of skill in the art how to make and how to use the invention as broadly as it is claimed). Appellants' argument does not address this issue and therefore does not reveal any reversible error in the § 112, 1st paragraph, rejection.

The case of Ex Parte Lim involved a mobile communications network, such as those used by cell phone providers. The Examiner issued a 35 U.S.C. 103 obviousness rejection based on two references - Lipsanen and Siren. The Appellant argued that Lipsanen did not disclose the claimed subject matter. The Appellant did not address Siren and did not address the combination of the two references.

The Board decided: "Appellants' argument [regarding] Lipsanen ... is unpersuasive as it attacks the disclosure of Lipsanen individually, rather than addressing the combination with Sirén described by the Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

The lesson here is a simple one. When attacking a 35 U.S.C. 103 obviousness rejection, it doesn't help to attack references individually. You must focus on the central concept behind the Examiner's rejection - the combination of the references. This means you must focus on why the combination - not the individual references - fail to disclose the claimed invention. For example, if your argument involves a claim element that is missing from the prior art, then you must argue that the combination - not the individual references - fail to disclose the claim element.

Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited to a particular distance. The Examiner gave this claim element short shrift, likening it to a non-existent limitation. But the Board disagreed and found this to be a tangible, structural claim limitation. The Board stated: "as a matter of claim construction, in giving the claim terms thereof the broadest reasonable interpretation consistent with the specification, we agree with Appellants that claim 1 specifies ... thus specifying a structural configuration." See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).

The case of Ex parte Yufa involved an apparatus for detecting particles using beams of light. At issue was a claim element that did not appear to be present in the original specification. The Board found the disputed claim element did not have support in the initial disclosure and therefore the 35 U.S.C. 112, 1st paragraph, rejection was affirmed.

The Appellant first made some weak arguments that certain ambiguous language in the original specification disclosed the disputed subject matter. This was quickly rejected by the Board. The Appellant then argued that the drawings disclosed the disputed matter. But absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Accordingly, in the absence of such a disclosure, the Board agreed that the disputed subject matter did not have support in the original disclosure such that the disclosure of the application did not reasonably convey to the artisan that the inventor had possession of the claimed subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).

The lesson here is that if you find yourself fighting a 35 U.S.C. 112, 1st paragraph, rejection, make sure you can point to solid language in the specification that clearly supports the disputed subject matter. Pointing to drawings may not pass muster.

The law on this issue states: "It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). Although "[a] patent applicant is free to recite features of an apparatus either structurally or functionally . . . choosing to define an element functionally, i.e., by what it does, carries with it a risk." Id. at 1478. Therefore, since the prior art reference had the identical structure as Appellant's claim, the BPAI decided the fact that it didn't disclose a "deflecting debris" function was irrelevant.

"[A] patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement." Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed.Cir.2005) (quotation marks omitted). Not all terms of degree are indefinite. However, the specification must "provide[ ] some standard for measuring that degree." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed.Cir.2005) (quotation marks omitted). In Hearing Components, the CAFC held that although the claim term "readily" does not refer to a mathematical measure of degree, in Datamize, the CAFC addressed the "purely subjective" claim term "aesthetically pleasing" and stated that, as with terms of degree, "a court must determine whether the patent's specification supplies some standard for measuring the scope of the phrase. Thus, we next consult the written description." Datamize, LLC v. Plumtree Software, Inc.

In Ex parte Allen Berger, the Applicant recited "one pane" in his claim and the Examiner found a prior art reference with "two panes." The BPAI noted, however, that Applicant didn't define "one pane" in the specification, and it was reasonable to interpret "one pane" to mean "two panes" that have been integrated. The Applicant didn't provide any good reasons why the aforementioned interpretation was unreasonable. The court must construe pending claims as broadly as their terms reasonably allow. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). As a result, the BPAI affirmed the Examiner's decision.

As the BPAI stated: "Appellants appear to argue that because the original Specification describes bonding a plurality of substrates where the base material is silicon or glass, then it must follow that the original Specification also describes bonding a 'plurality of glass substrates,' i.e., a first glass substrate and a second glass substrate."

The BPAI decided against the Appellants, stating: "We agree with the Examiner that the Specification discloses a device that is composed of only a glass substrate and a silicon substrate ... The Specification conveys with reasonable clarity to a person of ordinary skill in the art only that the claimed micro heat-transport device includes a silicon substrate ... and a glass substrate ... Just because Appellants' Specification describes bonding a plurality of substrates of glass or silicon, we do not find that this by itself, without more, conveys with reasonable clarity to a person of ordinary skill in the art bonding a plurality of glass substrates. To follow Appellants' logic would mean that the Specification also describes bonding a plurality of silicon substrates. We do not find that Appellants' Specification conveys with reasonable clarity such embodiments, i.e., bonding a plurality of glass substrates or a plurality of silicon substrates. Rather, the Specification conveys with reasonable clarity only bonding a glass substrate and a silicon substrate."

The lesson learned here is the criteria for meeting the written description requirement: conveying with reasonable clarity to a POSITA. To satisfy the written description requirement, the disclosure must convey with reasonable clarity to skilled artisans that the Appellants were in possession of the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Thus, when writing your written description, be careful to make a list of all embodiments you are or may be claiming in the future, and make sure it is disclosed with reasonable clarity to a POSITA.

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.