Federal Circuit Confirms that Patents Must Meet Both the Written Description and Enablement Requirements of Section 112.

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Fed. Cir. 2010) (En Banc Decision).

In a 9-2 decision, an en banc Federal Circuit has confirmed that 35 USC § 112 ¶1 includes separate written description and enablement requirements. “If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.” The court also clearly confirmed the prospect that originally filed claims can violate the written description requirement:


Although many original claims will satisfy the written description requirement, certain claims may not. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.

Possession vs Disclosure: The court did step away from “possession” as the hallmark of the written description requirement. Rather, the court wrote that “the hallmark of written description is disclosure. . . . [T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.”

General Principles: The court presented “a few broad principles that hold true across all cases”: “the written description requirement does not demand either examples or an actual reduction to practice”; however “actual ‘possession’ or reduction to practice outside of the specification is not enough; and a “description that merely renders the invention obvious does not satisfy the requirement.”

Basic Research – Tough Luck: The court recognized that the written description requirement makes it more difficult to patent “basic research” that has not yet been fully reduced to a practical implementation. The court’s reaction to that problem was tough luck. “That is no failure of the law’s interpretation, but its intention. Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others.”

That research hypotheses do not qualify for patent protection possibly results in some loss of incentive, although Ariad presents no evidence of any discernable impact on the pace of innovation or the number of patents obtained by universities. But claims to research plans also impose costs on downstream research, discouraging later invention. The goal is to get the right balance, and the written description doctrine does so by giving the incentive to actual invention and not “attempt[s] to preempt the future before it has arrived.” Fiers, 984 F.2d at 1171.

Holding: For the foregoing reasons, we hold that the asserted claims of the ’516 patent are invalid for lack of written description, and we do not address the other validity issues that were before the panel. We also reinstate Part II of the panel decision reported at 560 F.3d 1366 (Fed. Cir. 2009), affirming the district court’s finding of no inequitable conduct. The majority opinion was written by Judge LOURIE and joined by Chief Judge MICHEL and Circuit Judges NEWMAN, MAYER, BRYSON, GAJARSA, DYK, PROST, and MOORE. Judges NEWMAN and GAJARSA filed concurring opinions.

Judges RADER and LINN each filed opinions in dissent. [I will write more on this later]

166 thoughts on “Federal Circuit Confirms that Patents Must Meet Both the Written Description and Enablement Requirements of Section 112.

  1. In inventing a Written Description requirement in a way that makes them feel comfortable, the Federal Circuit has, once again, thrown their hat into the ring and chosen a peculiar theory about the way language works which doesn’t make sense. Specifically, the Court has said that meaning is somehow derived from a one to one correlation between word or concept (or, in other words, something in the head) and reality. On page 21 of the opinion, meaning, under the Written Description requirement, according to the Court, comes somehow as a result of a likeness between a) what one of skill in the art would “…visualize or recognize…” and b) structural (ie, physical) features or a representative number of species falling within the scope of the genus. In other words, something in the head is isomorphic with the outside world (the structural limitation and/or species). And, somehow one of skill in the art recognizes that isomorphism and derives ‘meaning’ from it; as if one skilled in the art gets a special feeling when the outside object fits, like a hand in a glove, in the inside mental concept.
    According to the Court, meaning sufficient to satisfy the Written Description requirement can NOT come from a functional limitation. Somehow, functional limitations lack that special recognition that structural limitations have.
    Imposing some sort of strange limitation that physical words on the inside, in the head, have to “…fit like a glove…” around designated physical objects on the outside exalts a peculiar metaphysical theory and has some really weird implications. What would one do with numbers (ie, how can something in the head match something that is ‘5’ or has fiveness in the outside world)? So, what exactly, is fiveness? Certainly, numbers can be recited in claims. And what about colors (how would something have ‘redness’)? And, why does functional language fail the test? Is it because the Court can’t “…visualize or recognize…” functional language? Well, how do they visualize or recognize structural language differently from functional language, is there really a ‘something’ in the Court’s head for structural language that isn’t there for functional language? And, is that how the Court gets meaning, from the ‘something’ in the head matching something in the outside world?
    I do not know how meaning works, but I do know that it doesn’t work in the weird way that the Court has hypothesized in Ariad. Meaning does not come from isomorphism, a sort of pairing of things on the inside (the head) with things on the outside. It’s ridiculous to say that one of skill in the art gets a strange or special feeling, that they can ‘visualize’ or ‘recognize’ when they’ve stumbled across a proper written description, a proper meaning, as the Court suggests. And, even without visualization or recognition functional language also has meaning. That is, one skilled in the art could certainly recognize an invention from so-called functional language alone.
    If the Court really has problems with ambiguity, there is an entirely separate section for that, namely 112, 2. Or, if they don’t feel a claimed genus has the correct number of representative species, there is a section (and test) for that too! Reading some weird theory of meaning into the Written Description requirement evinces the fact that the Court really has no idea as to how language operates and is willing to entirely screw up the law as a result.

  2. I have not read LizardTech recently, but broje’s synopsis seems consistent with my point. The accused infringer found a non-disclosed way to “literally infringe” and the patent claim was found invalid for lack of WD. The case is even stronger if the accused infringer has a patent on his accused embodiment, since evidence includes the PTO’s finding that the accused embodiment is not obvious from the disclosure of the original patent.

  3. ********
    No, the LizardTech decision says that the particular application didn’t have enough disclosure to support it.
    ********

    I disagree. In Lizardtech, claim 21 was directed to a DWT-based compression process that creates a seamless DWT of an image. Here the Fed Circ said that the specification only teaches one way of achieving the seamless DWT, and the claim did not contain a limitation to that way of doing it. The alleged infringer found another way of doing it, so they did not infiringe the other claims that did specify the one way the patentee taught.

    So I think I’ve proved my point. The Lizardtech decision does contradict that the inventor of doing C to achieve A will not infringe the prior claim to achieving A, beacue the claim to achieving A will be invalid for failing to contain a limitation to doing B.

    Your retreat to appratus examples suggests that you might think the patentee should have gotten an apparatus claim to a computer readable medium containing a seamless DWT of an image, and that claim would not have been invalid. Is it truly your view that the appratus claim is immune to the written description issue with originally filed and enabled claims?

  4. ping, the functional claiming issue and Halliburton arose in a BPAI case that was discussed here on PO not that long ago. If I remember the case or the blog post, I will post it here.

  5. Ned, I agree that functional claiming, as pointed out by Judge Lourie in Ariad, is an easy way to trip yourself up in a WD case. But I don’t think he limited the WD holding in that case to functional claims.

  6. American Cowboy, I think the real problem identified in O’Reilly v. Morse and Halliburton is claiming something in functional terms — what it does, not what it is. Let’s take the bucket example from above. Clearly the claim to a bucket covers a bucket with a handle, but does it cover a spoon? Not so clear. Now if the claim were to a device that contained a liquid against gravity and that could pore the liquid out upon tipping, this claim would literally cover both a bucket and a spoon. Here is where the Supreme Court draws the line and consistently so.

    Now Congress with Section 112, p. 6, authorized functional claiming with the “construction” twist. The Supremes in Warner Jenkeninson held as much. But now, the BPAI seems to suggest that one can both functionally claim and not fall under Section 112, p. 6 — and if one does that, one must “enable” the full scope claimed or the claim is invalid under Halliburton.

    On its face, nonsense. If a claimed is deemed functional, it should fall under Section 112, p. 6 and not be invalidated.

  7. You made me look at the case, and I found this little snippet at page 25: “There are, however, a few broad principles that hold true across all cases. We have made clear that the written description requirement does not demand either examples or an actual reduction to practice; a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement. Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366-67 (Fed. Cir. 2006). Conversely, we have repeatedly stated that actual “possession” or reduction to practice outside of the specification is not enough. Rather, as stated above, it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure, Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008), or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72 (Fed. Cir. 1997).”

    So, having enough disclosure in the spec so that Phosita would find various things within the scope of the claim obvious is not enough meet the WD test. But, the subject matter of a later patent, which must be non-obvious to phosita in order to be patented, is in your view just putting a clock in it. Man I hope you are right, but many District Court judge will have trouble following you.

  8. How would that court distinguish Ariad?

    There’s no need to distinguish Ariad, because Ariad clearly does not say that any claim lacks 112 support if a person later comes along and puts a clock in it.

    Try to be careful on Rader’s slippery slope. There’s not much to grab on to there.

  9. “I seem to remember someone (6?) correctly pointing out that such reasoning would invalidate any claim with the word “comprising” in. Therefore, no court would ever apply such reasoning.”

    Sounds good to me. How would that court distinguish Ariad?

  10. But if the claim is so broad as to read on as-yet not invented subject matter (as demonstrated by the fact that examiner 6 in his wisdom allowed a second patent on non-obvious subject matter that falls within the scope of the claim of the first patent), does not Ariad necessarily imply that the specification of the first patent does not show that its inventor possessed what was claimed in the second patent?

    I seem to remember someone (6?) correctly pointing out that such reasoning would invalidate any claim with the word “comprising” in. Therefore, no court would ever apply such reasoning.

  11. 6, I agree with your analysis under the old law.

    But if the claim is so broad as to read on as-yet not invented subject matter (as demonstrated by the fact that examiner 6 in his wisdom allowed a second patent on non-obvious subject matter that falls within the scope of the claim of the first patent), does not Ariad necessarily imply that the specification of the first patent does not show that its inventor possessed what was claimed in the second patent? The first patent’s claim is too broad and therefore invalid, since it reads on subject matter that was not in the possession of its named inventor when that application was first filed.

  12. 6: given your post above, at 12.13, I should be interested to read (in the other thread) your answer to the question posed by Luke, in Comment #1 in the thread “Guest Post: Ariad v Lilly”.

  13. American Cowboy, whether or not the WD req is met has nothing to do with whether or not the subsequently patented subject matter was obvious from the disclosure in the instant patent.

    It does have to do with whether or not the applicant showed that he knew of (and reduced to practice?) and described the genus sufficiently to show that he had in fact invented the entire genus. That is, in another way of saying it, he had possession.

  14. Rader’s point, and my point, is that taken to its logical conclusion, the FedCir’s WD requirement makes my description right and the conventional understanding obsolete.

    I think Rader’s taking that particular point a little too far. I can see alternatives casting doubt on the written description of an earlier patent, but not improvements. In any event, in order to cover the later-developed alternative the earlier patent would probably have to claim so broadly that it could be invalidated under 112 all by itself.

  15. IANAE, you are right that what I described is a defective version of the conventional understanding of the relationship between validity and infringement.

    Rader’s point, and my point, is that taken to its logical conclusion, the FedCir’s WD requirement makes my description right and the conventional understanding obsolete.

    One of them thar unintended consequences….

  16. The subject matter of a second patent in the field, since it is necessarily not obvious from the first patent, cannot infringe a valid claim of the first patent, since it is not part of the WD of the first patent.

    That’s a highly defective understanding of the relationship between validity and infringement.

    Patent A fully discloses and claims a bucket.

    Patent B fully discloses and claims a bucket with a spout, which is arguendo not at all obvious over Patent A.

    The validity and infringement exercises are left to the reader.

  17. There used to be rejection called ‘undue breadth.’ CCPA years ago did away with that, but essentially, isn’t that what the new WD requirement is all about?

    Using Venn-diagram-talk, consider: You invented and properly disclosed a small circle and your claims cover a much larger circle. In order for those of ordinary skill in the art to really practice all of the embodiments that your claims encompass, they will need to engage in undue experimentation and “invent” on their own, because those embodiments are not obvious from what you really disclosed. Your claims are unduly broad based upon your written contribution to the knowledge of the art. So essentially the “evil” that ‘undue breadth’ rejections were trying to prevent is now to be prevented with “written description” rejections.

    Judge Rader had this situation in mind in his discussion of blocking patents, which are well accepted by all in the field. But they are inconsitent with the new WD requirement. The subject matter of a second patent in the field, since it is necessarily not obvious from the first patent, cannot infringe a valid claim of the first patent, since it is not part of the WD of the first patent. That is, someone who invents and patents something later that is within the literal scope of a claim of the earlier patent invalidates that earlier claim by proving that the earlier patent had insuffienct WD.

  18. And yet those skilled in the art refer to a helicopter as a “rotary wing aircraft.”

    Sure, they do that now, but when “wing” is a claim term in the very first airplane patent you would never construe it that way.

    but the Lizardtech decision contradicts it.

    No, the LizardTech decision says that the particular application didn’t have enough disclosure to support it. It depends on what A and B are. I agree with you that it’s usually somewhere between difficult and impossible to get a valid claim on A when you only disclose one method B of accomplishing A, but I’m sure there is some oddball case where you could pull it off.

  19. *****
    it’s quite a stretch to call a rotor a “wing”
    *****

    And yet those skilled in the art refer to a helicopter as a “rotary wing aircraft.”

    *****
    The disclosure of B enables accomplishing A, and depending on the predictability of the art the patentee might well be entitled to a patent on accomplishing A. A later inventor of alternative solution C might be entitled to a patent therefor, but its use might still infringe the earlier patent on accomplishing A.
    ******

    That is what we learn in ye olde lawl school, but the Lizardtech decision contradicts it.

  20. Doesn’t this new WD requirement teach us that you should wait to file until you have worked out the various embodiments that you need to write about in order to satisfy the Court that you possessed the broad scope of your invention?

    If so, would it not be nice to at least be able to point back to your earlier species development in a Rule 121 declaration or interference proof and salvage something if prior art or an interference crops up?

    If so, shouldn’t we stick with First to invent?

  21. So the appeal should have never been heard?

    greggers_wfb claims …
    “The Appeal was Unconstitutional…
    Amendment VII (7): Rights in civil cases
    In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury shall be otherwise re-examined in any Court of the United States.”

    link to messages.finance.yahoo.com

  22. Since Homey don’t do answers, I will supply only an observation:

    Also unpersuasive is petitioner’s fourth argument, that the doctrine of equivalents was implicitly rejected as a general matter by Congress’ specific and limited inclusion of it in § 112, P6. This new provision was enacted as a targeted cure in response to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 8, 91 L. Ed. 3, 67 S. Ct. 6 and thereby to allow so-called “means” claims describing an element of an invention by the result accomplished or the function served.”

    Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (U.S. 1997)

    Now I’m pretty sure that the BPAI is rather powerless to reinstate Halliburton over a subsequent Supreme Court ruling – at least I hope that your are not seriously putting forth that the BPAI could do that.

  23. Thanks Ned,

    But I want to be spoon fed for a reason.

    What court level said that Halliburton was no longer good law?

  24. “The BPAI recently held that Halliburton remain controlling law so that functional claiming not falling withing Section 112, p. 6, are essentially, invalid under Section 112, p.1. ”

    I wish. Let’s see this magical BPAI decision Ned.

  25. Ping, well for one, the comments of Frederico on the ’52 act. I believe his comments were cited in a number of CCPA and Fed. Cir. cases. IIRC, he stated that Section 112, p. 6 authorized functional claiming, but with a twist – the construction clause. I don’t think Frederico was limiting his remarks to the particular form of the claim.

    You might want to check In re Donaldson for more discussion on what Frederico actually said.

    However, as I noted, with people still using functional claiming but without using the form of means or step, etc., the question arises: do these claims fall automatically under Section 112, p. 6; or are they invalid for not using the precise form. The question has never been addressed by the Fed. Cir. AFAIK

  26. ping, Halliburton was long believed to be no longer controlling law given the addition of Section 112, p. 6. But, since applicants continue to use functional claiming without clearly invoking Section 112, p. 6, the BPAI had to emphasize that functional claiming outside of means plus function were invalid under Halliburton.

  27. “So held the Supremes in Halliburton. The BPAI recently held that Halliburton remain controlling law”

    So nice of the BPAI to decide that a Supreme court holding is still valid.

    I knew the BPAI was powerful – I didn’t know that they were that powerful.

  28. In my experience, the written description requirement almost always arises during ex parte prosecution when one attempts to add some description allegedly supported in the spec as originally filed in order to add a limitation to the claims to distinguish over the prior art.

    Now the argument is made that the original specification teaches the added description. However, many times the added the description goes beyond the original teaching. This results in a “new matter” rejection. Even if the examiner does not object, the patent claims affected may be held invalid for violation of Section 112, p. 1.

    For example, the drawings may disclose a wing attached in some manner to the top of a body. The examiner cites the helo and states the claim element reads on its rotary wing. If I attempt to claim that the wing is fixed, the examiner will reject under Section 112, p. 1, that the term is not supported by the spec. If I then add to the spec that the wing is fixed, I will be met with a new matter rejection.

    Now, if I disclose and claim a machine, I need disclose only one way of making and using it to be entitled to the claim.

    Ditto any composition of matter or article of manufacture. The problem about undue disclosure arises with method claims and with genus claims in the unpredictable arts.

    Circling back to O’Reilly v. Morse, his claim 8 was in the nature of a method claim, not an apparatus claim; and therein lay the problem. One cannot claim all apparatus that accomplish a certain result or perform a certain function simply by disclosing one apparatus that performs that function. That would be preempting the future inventions of others that the inventor did not describe or enable.

    The same problem occurs with “means plus function” claims where the claim elements are expressed in terms of what the do, not in terms of what they are. Unless limited to the disclosed embodiments, the claims would be the same as in O’Reilly v. Morse and would be objectionable for the same reason. So held the Supremes in Halliburton. The BPAI recently held that Halliburton remain controlling law so that functional claiming not falling withing Section 112, p. 6, are essentially, invalid under Section 112, p.1.

  29. IANAE is right yet again, broje TINLA IANYL says “in the predictable arts” and IANAE must correct this blatant error in the hypothetical by restating “depending on the predictability of the art”.

    And it is altogether “quite a stretch to call a rotor a “wing” even though it operates on a similar aerodynamic principle” (that similarity is so unpredictable), because calling it a “lift-force mechanism” that would capture both a wing and a rotor would make the hypothetical more clear as to the real question under foot.

    Can anyone remember what the real question of the hypothetical was?

  30. it appears that the Written Description issue arises in the predictable arts when the patentee is the first one to figure out how to accomplish A. He teaches a solution B, but instead of claiming accomploshing A by doing B, he simply claims accomplishing A.

    The real question in my mind is whether the patentee invented the solution B, or whether he invented accomplishing A. The disclosure of B enables accomplishing A, and depending on the predictability of the art the patentee might well be entitled to a patent on accomplishing A. A later inventor of alternative solution C might be entitled to a patent therefor, but its use might still infringe the earlier patent on accomplishing A.

    It’s hard to see where to draw the line between predictable and unpredictable arts in an abstract hypothetical.

    The helicopter would infringe this claim becaseu the rotor is a rotary wing, and the claim does not specify a fixed wing, or that the wing is connected to the frame, or that the internal combustion engine motivates a propeller to generate the airflow.

    Assuming the actual claim is as lacking in structure as the hypothetical one you propose, there is still the issue of construction of the term “wing”. It would depend on the spec, but it’s quite a stretch to call a rotor a “wing” even though it operates on a similar aerodynamic principle.

    I don’t know that it would matter if there were another claim to a propeller, but it might be fatal to have a propeller described in the spec. If you were representing the helicopter manufacturer, you’d argue that the rotor is a propeller blade and not a wing as those terms are used in the spec, so actually you don’t have a wing at all.

    Now, what if we really are back in the day, and you have to decide whether a helicopter infringes an omnibus claim in an airplane patent?

  31. Having reviewed some of the caselaw, including the Lizardtech case that 6 identified, it appears that the Written Description issue arises in the predictable arts when the patentee is the first one to figure out how to accomplish A. He teaches a solution B, but instead of claiming accomploshing A by doing B, he simply claims accomplishing A.

    In other words, it seems that the Written Description rule is being applied to enforce that the first person to figure out how to do something, does not get to claim every possible way of doing that thing. He only gets to claim the particular solution that he teaches.

    It appears that some would rather say it is an enablement issue, because the patentee did not enable how to accomplish A by doing anything but B.

    I guess it is sort of a “tomato/tomotto” situation.

    But I wonder who the doctrine would be applied in the case of a claim to the airplane being enfiorced against the helicopter, if the claim merely recites:

    a frame;

    a wing;

    and an internal combustion engine connected to the frame and operable to generate an airflow over the wing.

    The helicopter would infringe this claim becaseu the rotor is a rotary wing, and the claim does not specify a fixed wing, or that the wing is connected to the frame, or that the internal combustion engine motivates a propeller to generate the airflow. Would the inventor of the airplane be entitled to a patent on every flying apparatus that has a wing and an internal combustion engine? How do you think it would come out at trial? Would it matter if there were another claim int he patent to a a flying appratus having a fixed wing and a propeller, or if there were dependent claims reciting these limitations?

  32. As we saw with the “synthetic propensity” case, claims should be construed with an eye towards understanding their proper meaning, not some impossibly wrong meaning that so often happens during reexamination. Such wild and woolly interpretations are not without real cost to the patent owner.

    I agree with that. The real problem isn’t the B, it’s the R. Too many examiners interpret the claim terms in a way that is divorced from ordinary use of language in the art, and to my mind that is not a reasonable interpretation. The examiner’s interpretation should be the broadest one that is reasonable to a person skilled in that art.

    In contrast, during the original examination, such interpretations can help the applicant clarify the claims. This is why BRI may be appropriate there.

    I don’t see the “contrast”. The only real difference I see is that on re-exam the owner has probably already identified potential infringements and has a much stronger desire to not amend his claims as a result. Either way, the PTO has the same responsibility to allow the good claims and reject the bad ones.

  33. IANAE, no doubt patent owners will argue one way for validity and another for infringement. Defendants do the same thing as well. But the argument about claims construction ends with a Markman order prior to determining validity or infringement. That ends the loosey-goosey, nose of wax stuff.

    Now, assume no BRI during reexaminations. The patent owner still may have to argue that so and so reference does not have certain features. This effectively estops him or her from claiming such features as infringements.

    The statute, however, provides no grounds for invalidating a claim that can be read broadly in the abstract. As we saw with the “synthetic propensity” case, claims should be construed with an eye towards understanding their proper meaning, not some impossibly wrong meaning that so often happens during reexamination. Such wild and woolly interpretations are not without real cost to the patent owner.

    In contrast, during the original examination, such interpretations can help the applicant clarify the claims. This is why BRI may be appropriate there.

  34. Now, my complaint about BRI is primarily if not exclusively directed to reexaminations. Here, the emphasis should not be whether the claims are clear or not, just whether the claims are patentable or not with a proper construction.

    In other words, your complaint is that BRI is not a “proper construction” during re-exam.

    I understand the problem that a patentee is at risk of losing money, but that still doesn’t mean he should get claims he’s not otherwise entitled to, especially in a patent that is much more likely than average to be asserted in court.

    When the patentee tries to capture the infringer’s device within his claims, he’ll be arguing for a construction as close to BRI as he can get. It’s absolutely proper for the PTO to examine that same scope and ensure that it is allowable.

    If the patentee is forced to narrow his claims because the BRI is both R and too B, but he can still capture the defendant’s product, let him have his remedy.

  35. Max, I cannot speak for all American patent attorneys, but I do listen to examiners. They are quite helpful, and it is generally never a good idea to be disrespectful in any way to someone who is trying to help you.

    Now, my complaint about BRI is primarily if not exclusively directed to reexaminations. Here, the emphasis should not be whether the claims are clear or not, just whether the claims are patentable or not with a proper construction. Being “helpful” with an issued patent is not what the patent owner needs, as any amendment can lose the patent owner literally hundreds of millions in patent value.

  36. Well ping, we can surely agree that we are all here because we like to talk. You are right, it does stand to reason that I have no relevant experience, simply because I have no idea what you mean by:

    “….desire is pretty much meaningless….”

    What does have “meaning”, I suppose, is disposal points. In the EPO, an Examiner gets one for a case allowed but two for every one he refuses.

  37. These US commentators know more than me

    Don’t be so sure Maxie. One thing us americans like to do (just like you), is talk about things we know very little about.

    Anyway, it stands to reason…

    It stands to reason that one side wants to jump to the rhythm – the c+c (music factory) not really being the driver you may think. If you had any experience on what you are talking about, you would quickly realize that that desire is pretty much meaningless to the examiner. We have a boatload of cases and any individual case simply is just another widget.

    Do I care that you really, really want the patent to make people sweat with c+c?

    No.

  38. ping, “wearing down”? Who am I to determine such a thing? Others have said it though. Lemley was it? These US commentators know more than me, about what goes on, at the USPTO. Anyway, it stands to reason, doesn’t it, that if you can get a presumption, rebuttable only with c+c, once you are through the Exr, wouldn’t any diligent prosecutor be tempted to indulge in a spot of wearing down, especially if a client pays you by the hour to do it? Why else is it that we Europeans are constantly being exhorted to get more “aggressive” with the prosecution?

  39. bully or “wear down” one’s squire

    Maxie, are you really saying that examiners are bullied and worn down?

  40. Ned, I can imagine readers having difficulty with the concept of deference to a PTO Examiner. Perhaps “paying attention to” would better suit what I am trying to get across. Imagine you are a knight in a suit of body armour, about to go out on to the battlefield with sword and shield. Your squire is there to check over your armour, make sure there are no gaps, make sure all leather straps holding the metal plates over your precious bits are free of weak points, all rivets sound, etc, etc. As one’s squire goes about the work that you have paid him to do, does one habitually bully or “wear down” one’s squire, or does one better pay great attention to any observations on validity that one’s squire is alert enough to spot and kind enough to utter?

  41. Ned EPO Examiners do “broadest reasonable” just as enthusiastically as in the USPTO. It’s a great cattle prod (to put it graphically), to startle Applicant’s attorney and get him moving in the right direction, towards a clear claim that’s unambiguously novel over the art.

    Of course, the EPO Exr has a big advantage over the USPTO man: no tribunal in Europe gives any deference whatsoever, after issue, to anything an EPO Examining Division decides, prior to issue. So it is, that Applicants at the EPO are more deferential to Examiners than Applicants at the USPTO are (apparently) to its Examiners.

    There’s another Principle dear to the hearts of EPO folk. It’s the Principle of Legitimate Expectations. The EPO now has 37 Member States. It is keen on citing principles of The Rule of Law that it perceives to be generally accepted throughout its jurisdiction. It thinks there are some.

  42. Ken, I agree. Without written law (particularly case law involving real situations), the power of government to act in an arbitrary way would be unlimited except by the restraint of the official.

    The struggle for liberty is just this: to restrain arbitrary power by law. The Roman plebes, circa 500 BC, forced the Senate to write down the laws and post them in the forum for all to know and see. Prior to that, the power of the Kings and Consuls was unchecked.

    One cannot have liberty unless one has rights and one cannot have rights without law, the clearer the better.

  43. “The skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense. He should try, with synthetical propensity i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Article 69 EPC). The patent must be construed by a mind willing to understand not a mind desirous of misunderstanding.”

    “Thus the skilled person would bear the description and drawings of the patent in mind when deciding what claim 1 as granted means.”

    Max, I love this. Obviously does not apply to examiners in the US who normally take the BRI to mean the most unlikely, unexpected, and remote interpretation possible consistent with the language of the claim and regardless of the specification.

    For those who do not want to read the EPO case, it is remarkably good. The case involved an appeal by a dissatisfied opposer who insistent that the language of claim 1 as granted was clear and that the limited claim 1 was broader. However, claim 1 as granted had multiple interpretations, some of which were literally incorrect given the specification and dependent claims such as claim 2. The EPO ruled that the illogical and technically incorrect possibilities had to be ruled out as proper interpretations.

  44. The Written Description requirement is mandated by the Due Process Clause of the Fifth Amendment. Congress cannot allow a monopoly that is to have the force of law without providing notice to the public of the prohibited acts. A patent is basically a private contract between the Federal Government and a private party that has the force of law. It is that simple. Every act of Congress must comport with the constitution. Without the constitutionally required notice of prohibited conduct a patent fails. It is that simple.

  45. Ping, see the opinion at section B. Also: Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 433-34 (1822)

    Indeed, if the device is wholly new and performs a new function, and is not an improvement, perhaps. That was the custom in the early days with wholly new machines. See the case.

    But today, we normally need more.

    Back to the provisional — the inventor hands the blueprints to a patent attorney. Should he file them as provisional or simply draft the application — perhaps losing three months?

    Your call. Why and why not?

  46. Ordinary skill in the art is so powerful that all ways of making are known and thus the inventor is therefor excused from actually having to include any mention of how to make the design (enable). Let’s simply disband the trifling requirement of 112 paragraph 1.

    Sarcasm noted.

    What more do you need to enable making a shape than pictures of the shape? What more could the inventor possibly give you in that regard?

    Bear in mind that the “invention” you’re enabling doesn’t have to actually do anything other than be that shape. It’s an art project. Grab a lump of wet clay and get to work.

  47. ping, the EPO chooses to analyse inventions in terms of technical features and technical effects. A claim is a combination of technical features. Obviousness is assessed by reference to technical effects (which translate to solutions to objective technical problems). Inventors who want to keep their inventions secret while they attract interest often boast about technical effects (results) while holding back the inventive technical feature combination that got them there.

    US drafting recites features but not effects. European drafters take care to tie effects to recited feature combinations (claims). Usually, the narrower the dependent claim, the more powerful the effect.

    So, in one’s app, one can speak of problems solved, without reference to any particular prior published patent specifications. Just look at anything written in Europe.

  48. Take the blueprint example. They might tell one how to build the device, but unless one actually builds it according to the plans, it is not easy to understand exactly what the device is.

    Since when does ease have anything to do with it Ned?

    If the blueprint enables, then no issue. If the blueprint does not enable, then back to square one. A fully enabling blueprint in a quick and dirty provisional would be a nice trick without claims to know just what the claimed invention is. I would surely think that if you have fully enabling blueprint, you are WAY past the stage of a quick and dirty provisional.

    Further, we need to know what the problems were in the prior art how the invention solved them

    Hmm, I’m pretty sure I can get a patent without a single reference in my specification and claims to any prior art. Yup – I’m looking at one now. So Ned, How do I know what the problems were in the prior art without a reference to the problem in the prior art? That’s kind of like saying there shall be no patents in new areas of art, since we need prior art to know what we are overcoming. Now the Eaton case you talk about (can you give a cite?), may provide something else, but does not control in all cases.

  49. Ken, it is also hard to understand how the claims could adequately inform without there being a corresponding description of the invention that included drawings where necessary.

    Take the blueprint example. They might tell one how to build the device, but unless one actually builds it according to the plans, it is not easy to understand exactly what the device is. Further, we need to know what the problems were in the prior art how the invention solved them.

    The problem in the early Supreme Court case cited by everyone, the Eaton case, was that the inventors simply described a whole machine where only part of it was new. One could only tell what was new by building both the old and the new machines and comparing them. The dissent said this was enough as the invention was enabled, but the majority additionally required the inventors to distinguish the old from the new.

    Now, this makes sense.

  50. Once you know the shape, you know how to make the shape. Whittle it out of a log if you want. Carve away every part of the log that isn’t that shape, and you’re done. Ordinary skill in the art.

    IANAE is once again correct (wink wink).

    Ordinary skill in the art is so powerful that all ways of making are known and thus the inventor is therefor excused from actually having to include any mention of how to make the design (enable). Let’s simply disband the trifling requirement of 112 paragraph 1.

    Wow – they do say a picture is worth a thousand words – I just didn’t know that that thousand words included the statutory provision of capturing the manner and process of making and using, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains.

    I guess my claim to a three dimensional bas relief of the Mona Lisa through a pin-hole entrance in a diamond film is automatically fully, clearly, concisely and exactly enabled because I can draw it.

    Welcome to the Brave New World!

  51. Max, I was referring to your post at 1:52 pm and the “propensity” problem you guys had in Europe.

  52. Ned Heller writes:

    “MaxDrei, can you give us an example of the problems you guys had in Europe? I can imagine what it is, but it would be better to have it straight from the horse’s mouth.”

    Ned, regret too cryptic for me. Europe has worked through a multitude of problems. I should like to oblige but I don’t know what you want. Will you give me a clue?

  53. Without the written description requirement a patent would be contitutionally infirm for failing to comport with the Notice Requirements of the Due Process clause of the Fifth Amendment. Congress has no authority to grant a monopoly to any party without ensuring that the public be placed on notice of what behavior the public is to avoid so as not to violate the monopoly. This is really very simple stuff. It’s just that everyone forgets that the Congress is part of a limited government. A patent is essentially a contract between the Federal Government and a private party that has the force of law. Therefore, the patent, at a minimum, MUST satisfy all Consitutional requirements imposed upon Congress in order to have the force of law. This is the problem RIAA faces in the Copyright situation. Everyone is entitled to access a free copy of the Copyright material so that one is placed on notice of what behavior is to be avoided. It is just that the Courts and the Federal Government do not want this line of thinking in the public consciouness, becasue of the huge amount of revenue lost if everyone was entitled to access free copy of Copyrighted material so that one would be put on notice as to what is not to be copied. Could you imagine if we were held accountable for laws we were never entitled to view. I think the last time that happened we rebelled against a lawful government that was ordained by God, at least that is what King George thought.

  54. MaxDrei, can you give us an example of the problems you guys had in Europe? I can imagine what it is, but it would be better to have it straight from the horse’s mouth.

  55. 6, I scanned the Appeal Brief in reexam 90/007,503. They have a whole section on Section 120 support in the 1989 application — necessary it seems to antedate a number of intervening references. The Fed. Cir. holding now means that that claim for priority is gone on the basis of collateral estoppel.

    Further, claims 80, 95, 144 and 145, subject to reexamination, are now held invalid and will, as soon as the mandate becomes final, moot the appeal of these claims.

    Still, they have numbers of other claims on appeal. They might be able to prevail on the merits with respect to these claims against all references. One never knows.

  56. As to “comprising” does the USPTO object to it in a claim to an alloy composition? In Europe, you have to account for 100% of the composition.

    Apart from alloy claims though, I don’t see any incompatibility between “comprising” and “enablement in terms of generality commensurate with the ambit of the claim”. After all, there would be no valid claim left, anywhere under the sun, if all it takes to invalidate it is an embodiment, within the scope of the claim, but which can’t function. Any patent attorney can come up with one of those in 5 minutes or less, if that’s what’s needed. EPO readers, it’s the Principle of Synthetical Propensity, all over again, isn’t it?

  57. “It seems related to the Liebel-Flarsheim, Automotive Technologies, and Sitrick line of cases, in which modern Courts find claims invalid for failure of the specification to enable the full scope of the claim. Do we have to stop using the word “comprising?”

    Listen to the oral arguments in Ariad and they address this. It may have been the first round. Lipsey was on point.

  58. I’ve had a little time to think it over and can’t help but see a problem with all claims that use “comprising” claiming subject matter that is not described in the specification. It seems related to the Liebel-Flarsheim, Automotive Technologies, and Sitrick line of cases, in which modern Courts find claims invalid for failure of the specification to enable the full scope of the claim. Do we have to stop using the word “comprising?”

  59. NAL, I think you confuse and conflate the written description of what the invention is with the written description of how to make and use it. To the extent the art knows how to do something, you actually need very little disclosure.

    All, That Canadian decision regarding Zyprexa is mandatory reading. link to freepdfhosting.com

    The patent was invalidated based on insufficient, i.e., no, disclosure of unexpected advantages of the compound over other compounds in a previously patented genus (at least in humans). There were “indications” of such advantages known at the time, and these were later confirmed, but the specification as filed described no actual comparative data.

    Back to the range example, the reason that one cannot patent a subrange (1-6.9) of a broader range 1-10, even if the subrange is originally claimed, is that there is no disclosure in the patent of any unexpected advantages in the subrange. To the contrary, if the specification does show an unexpected advantage of a subrange, claims to that subrange should be patentable.

  60. A picture may show what is the design (description), but it does not tell me how to make the design (enable).

    Once you know the shape, you know how to make the shape. Whittle it out of a log if you want. Carve away every part of the log that isn’t that shape, and you’re done. Ordinary skill in the art.

  61. Noise, it was remiss of me to use the American acronym PHOSITA because, not being a US practitioner, I can’t answer your question. Sorry. With Europe’s “notional skilled addressee” your question has no meaning because Europe doesn’t follow KSR.

    Perhaps other readers can help you.

    Paul, thanks for this Canadian Decision on olanzapine. I suppose I can Google to get hold of it.

  62. Mr. IANAE,

    A picture may show what is the design (description), but it does not tell me how to make the design (enable).

    Isn’t the upshot of the en banc decision that there is a difference between the description and the enablement? Hasn’t the court just emphatically made this distinction?

  63. how is the requirement to describe, especially concerning the “make” portion of 112 paragraph 1 satisfied in a design patent application?

    The description says “here is a picture of it”, and the drawings show a picture of it. The “invention” is the shape of the thing, so it’s fully described. You make it by building something that looks like the picture.

    If you don’t show enough pictures of it to fully “describe” the shape, you will get a 112 rejection. Both first and second paragraphs, since the drawings are also the claim.

  64. This may be off-topic, but how is the requirement to describe, especially concerning the “make” portion of 112 paragraph 1 satisfied in a design patent application?

  65. “For the PHOSITA, the information content of the two specifications is identical.”

    MaxDrei, I find a hint in your comment that could use some amplification. I reference the double-edged sword of common sense.

    How is this requirement to describe, with stare decises now petrified with the overwhelming en banc decision, balanced against the requirement (or perhaps now merely an antiquated notion), to not include information that a PHOSITA is considered knowledgeable of? Is the PHOSITA under discussion the common-sense-steriod driven PHOSITA of post-KSR whom, with near omniscience, can delve into any art field for “common sense” solution-driven puzzle pieces, or will the uncertain breadth of the application of the court’s ruling drive the prudent practicioner to an overabundance of specification filler?

  66. The potential legal issues concerning Markush claims could fill a book.

    We can all draw formulae of compounds that have never been made but might be made. Depending on technical field their properties might be predictable, somewhat predictable, somewhat unpredictable or entirely unpredictable. Even in a field such as pharma where unpredictability is at a maximum, reasonable prediction is possible where there are established structure-activity relationhips.

    The problem with listing compounds that have never been made is that some of them may not posess the claimed activity, and then your generic claim falls to the ground. We try to see round corners on behalf of our clients, but cannot go further than the science predicts. In relation to scientific knowledge and reasonable prediction, the Canadian decision concerning the olanzapine (Zyprexa) patent (O’Reilly J., 5 October 2009)is of great interst, even if it was not followed in the UK, and this decision in my view is on the “required reading” list

  67. Oh thank you Malcolm, for raising a point which has troubled me too. Short answer: I am not sure the EPO jurisprudence has yet reached stasis on this issue.

    This is a dilemma in chemical cases generally. Must one write a 1000 page specification with 900 of the pages adding nothing to the information content, just to be professionally competent. I hope not but I fear so. But, I’m not a chemist and I don’t understand chemical jurisprudence.

    Suppose claim 1 recites a generic formula, say CmHnOpNq (in diagrammatic form), and the spec is replete with Examples, say 50, dotted all over the territory. Now suppose there are two competing Applicants, who filed independently of the other, at around the same date. One of them has a 2000 page spec in which there is an individual (diagrammatic if you will) recitation of every permutation of the formula, and the other spec lacks that recitation. For the PHOSITA, the information content of the two specifications is identical. But is it identical to those who must decide which of the two Applicants was the “first” in relation to a claim specific to a molecule which is not one of the 50 Examples?

    Somebody upthread mused on “the return of the 1000 page specification”. He’s not wrong, is he?

  68. Also note Ned, that Lilly even alleged that the claim violated 101 based on preemption which you and I have discussed nearly to death. The panel in the case decided to settle the issue on 112 and resolve the case that way though.

    I wouldn’t have remembered this argument they made (as the old decision of the panel is very hard to find, if it is even possible to find at all) but I happened to be listening to music and my player jumped to the Ariad oral arguments pre-en banc.

  69. Ned, see this discussion at Docs:

    link to patentdocs.org

    Apparently there is a reexam going on right now. See the most recent Docs post that was posted just today in the comments by Kev.

    There may even be a final rejection under U.S.C 102 for some instant claims in a hypothetical reexamination proceeding which has never and will never exist.

  70. “Being confined to the 1991 date, the issue would then have become, were these claims invalid for some reason?”

    I believe we’ve discussed in the past that in this case the facts say that they would have been. Specifically 102.

    However, that aside, it doesn’t matter, when you make that claim for priority, if your patent issues it doesn’t become a CIP magically just because you added new matter. If you added new matter it gets invalidated iirc. Validity being of course a question for a court to decide.

    This shouldn’t bother you Ned, especially if you have your thinking cap on. The public needs to know, reliably, when the “monopoly” will end. If you go messing around with the claimed priority date willy nilly after issue that throws out the previously determinable patent term.

  71. Re: the above U. of Rochester decision comment that: “..molecules turned up in < 2 years which is a very short time in the industry and points towards enablement. ”

    ?? What prior Fed. Cir. decisions have ever held that “wish list” claims can be held to have sufficient 112 enablement without spec support by something not even known in the art until two years later? Certainly not this case or any cited. That is confusing 103 obviousness with the very much stricter 112 enablement and description requirements, as this decision notes.
    P.S. If universities want to get “their piece of the pie” for their theoretical projections, as asked above, they can make more effective use of a 35 USC 103(c) “joint research agreement” – that’s what that statute is for. Also, they can get more patent law sophisticated licensing personel, as the U. of R. and some others have now done.

  72. MD: Or, you might persuade the Office to allow 1-6.9, provided you have a recitation of 6.9 in your app as filed.

    What about a recitation of “1-10, wherein said range includes 1 and 10, every intervening integer, and every 1/1000th fraction thereof, i.e., 1.001, 1.002, 1.003 … 9.997, 9.998, 9.999, 10)”. Does that work? Or do I have to provide a Table listing all the values expressly? If the latter, what purpose does the Table serve that a recitation such as the one I suggested does not?

  73. EG, not mutually exclusive, is it? Can’t he be both? If he likes to describe himself as an “alien”, he’s free to do so, I suppose. I’ve been tempted to do the same thing myself. On arrival in the USA we Europeans are made very much aware that the designation “alien” applies to us. I find it mildly amusing, and I guess Paul does too.

  74. Ned, I read you, and find your line persuasive. But so what? I know little of US patent law’s complexities.

    As to 6.9, in the EPO you might be able to retain 1-10, provided 7 is in a 54(3) reference and you disclaim 7.

    Or, you might persuade the Office to allow 1-6.9, provided you have a recitation of 6.9 in your app as filed.

    But other than that, you lose. 1-6.9 might be some later filer’s selection invention. In such an eventuality, you were not FtF on the invention of 1-6.9, were you?

  75. The merits of this case bother me. The ’516 is a 1991 CIP of an 1989 abandoned application. Fig. 43 was added in 1991. It “described” one method of reducing NF-kB activity. As well, a 1990 publication, added to what was described, would have apparently been enough to describe a second way of reducing NF-kB activity. But the jury had to choose between two dates of invention: 1989 or 1991. They chose 1989. As a result, the patent was held invalid. Had they chosen 1991, it was not invalid for reasons of written description. But, if this were the effective date, were the claims invalid for some other reason such as prior art. There is not enough in the opinion to even guess.

    But, assuming there was not, isn’t the result here wrong? Shouldn’t the Feds have simply held that the invention was not fully described/enabled until 1991 and was not entitled to the benefit of the 1989 date? Full Section 112, p. 1 support for claims are required for the benefit of the earlier date. It was not present here.

    Being confined to the 1991 date, the issue would then have become, were these claims invalid for some reason?

  76. Ned, When you say claims to , enabled, but previously unclaimed subject matter as “new matter.”, do you mean disclosed as meeting the WD?, or disclosed in the Rader sense of enabled, but not in the En Banc sense of WD?
    Posted by: ping | Mar 23, 2010 at 12:00 PM

    I think enabled, but not described in some sense. Examples are given in the majority opinion. A method can be used to make A, B or C, but only A is disclosed. The claim cannot claim the genus of A, B and C.

    I prefer ranges. Assume the disclosure shows unexpected results for a range of 1-10. Can I claim a subrange of 2-5? No. Not when filed; and not later by amendment. There is no criticality disclosed. But clearly, 2-5 will work. It is enabled.

    In Muncie Gear, the original application was totally directed to the deflection plate, although the housing and anti-cavitation plate were shown and described. The Supremes said the problem with the late claim wasto the combination of the anti-cavitation plate and housing was there was no hint that this was an invention in the application as filed. The Supremes also objected to new matter added to the specification and claimed in two of the four claims at issue describing the housing as smooth. The Feds have held that Muncie Gear is limited to “new matter.” Other circuits courts do not agree. But the holding in Lilly clearly opens the door to a written description rejection to a late claim to adequately disclosed but previously unclaimed subject matter where there was no suggestion that the unclaimed subject matter was an invention.

    Back to the ranges. So I disclose and claim a range of 1-10 and the prior art shows 7. Can I file a new claim to 1-6.9? If not, why not?

  77. As an alien, as I am reminded each time I visit the US, it would be improper for me to express any view as to what the outcome should be on this debate on which opposing views are possible and which is an issue of US domestic law. An unavoidable underlying issue, however, is the balance between fundamental, often university based, research and downstream research. There are sound arguments that as the pharmaceutical industry has to develop the lead compounds, prove them safe and effective, and carry the can if they turn out to have hidden drawbacks that they should reap the profits. There are also arguments that if it is an upstream breakthrough that makes a valuable new drug, or class of drugs possible, then the patent system should provide them them with the legal right to a share in the benefits, and that purely voluntary recognition by research grants and endowments is not an adequate reward.

    Sometimes the patent community needs an input from outside generalists. This may indeed be such a case.

    Paul Morgan’s argument would carry more weight if it had proved really difficult to find suitable drugs following the discovery of the target. But as I recall lead molecules turned up in < 2 years which is a very short time in the industry and points towards enablement. Of more significance in the University of Rochester case (though not in issue before the CAFC) was whether the Rochester inventors really were the first to find the target, and I recall debate on that issue at the time, which may be one reason why it may not have been the best case to go forward to the Supremes.

  78. One other question I have is whether the WD guidelines that are given by the USPTO still would apply. Here, I notice various differences of application of the WD requirement. Not only between US and Europe, were gene homology is allowed (in general) for 95% and 70% homologues, respectively. Why this difference?

    Those guideliness change like the wind. The wind in Europe does not always blow in the same direction as the wind in the United States.

    I don’t expect this answer to satisfy anybody, but there it is.

  79. Yet it is allowed by the USPTO to claim an antibody specifically directed to a new antigen by only having a written description for the antigen and no WD for the antibody.
    Can somebody explain this to me?

    This was a really silly decision at the time and remains wrong to this day. By disclosing the antigen, you arguably render the genus of antibodies obvious (although possibly some extraordinary antibody could be patentable by someone else who actually did the R&D to create and characterize it).

    But you aren’t entitled to a patent on all such antibodies. I would argue that Ariad kills the previous law and/or PTO position on the subject of claiming antibodies to new antigens, and it’s been a long time coming.

  80. Yes, “the University of Rochester case .. was about the discovery of a molecular target that lead to practical drugs.” The claims to THAT invention had no problem, but the patent with the litigated claim [on which reportedly more than 10 million litigation dollars were wasted before getting a highly-predictable (by myself and others) 112 summary judgement] was actually claiming such drugs, even though no such actual, achieved, drug was described anywhere in that patent! Not surprisingly the CAFC in this case dumped on that suit for the second time.
    I like to use this as an example of why one needs to get a competent fully independent legal opinion before filing a patent suit by someone other than trial attorneys poised to make millions in legal fees from suing whether they win or lose. Plus, not relying on PTO examiner screw-ups in allowing claims they should not have.

  81. in-house,

    that is a very good example and it illustrates that some genuses do not have to be sufficiently described, while for other genuses it is aceepted that more than one example should be given. I guess it has something to do with the ‘predictability of the art’ but nevetheless, this seems only to allow a gliding scale.
    I agree with one of the other commenters here that the real pain in the ass is not the courts deciding on enablement/WD issues, but the Examiners. If the example of in-house an examiner would require examples for at least 3 sorts of animals, I suppose that could be regarded as a correct interpretation of the law.

    One other question I have is whether the WD guidelines that are given by the USPTO still would apply. Here, I notice various differences of application of the WD requirement. Not only between US and Europe, were gene homology is allowed (in general) for 95% and 70% homologues, respectively. Why this difference?
    But also between various categories strange differences are noticeable: it is not allowed to claim a human gene if there is no written description of it, although it is fully enabled (Univ. California – Eli Lilly). Yet it is allowed by the USPTO to claim an antibody specifically directed to a new antigen by only having a written description for the antigen and no WD for the antibody.
    Can somebody explain this to me?

  82. Paul – maybe the university guys can keep their traps shut, sign an agreement with a drug company, and together get the invention far enough along to secure rights to drugs before disclosing?

  83. ” In the University of Rochester case there were acid comments about the philosopher’s stone. But the Rochester discovery was not like that – it was the discovery of a molecular target that lead to practical drugs and it did so very quickly indeed.”

    Paul,

    I’m very familiar with the Rochester case, and the holding there (and in Ariad) doesn’t alarm me in the least. The problem in Rochester was the patent disclosed, at most, one compound that fit the COX-2 enzyme mechanism. In fact, until you ran a compound through the drug screen described in the Rochester patent, you couldn’t predict which compounds would fit the COX-2 enzyme mechanism.

    Also, like Ariad, the patentee in Rochester went after broad generic claims; if you do that in the US, you had better have sufficient description on how to enable the genus. In other words, what Rochester and Ariad come down to is if you want broad generic claims, you must describe/enable that scope in the patent description. That’s been true since the 1853 case of O’Reilly v. Morse where Samuel Morse claims were upheld on the telegraph but not on all ways to electronically communicate (which could of have included the yet to be discovered telephone) which Morse hadn’t described/enabled.

  84. Here’s how far I can see this being taken by your friendly Examiner.

    Imagine the following claim “1. A method of treating inflammation in an animal, comprising administering to said animal a dose of at least 5 milligrams of an enantiomerically pure R-NSAID per kilogram of said animal’s body weight.” (See 6472433).

    If Dennis’ highlighted text(which, by the way is dicta) from this case is taken to its (il)logical conclusion, the following words in the above claim must have a sufficient number of representative species to demonstrates to an Examiner, I mean a PHOSITA, that the applicant has invented species sufficient to support a claim to the genus:

    animal, at least 5, pure, R-NSAID

    If we just take the first word, animal, does the applicant need to test this is mice, humans, alligators, beagle dogs, pandas, and Tasmanian devils to support the word “animal?”

  85. @ping’s “Choose any that does not have actual code included.”

    The USPTO strongly discourages us from including actual code. They permit pseudopod. But the only time I think Courts have held that an algorithm is necessary is in the case of “means plus function claims.” And, even there, the Federal Circuit has said that a mathematical formula or a flow chart detailing the steps of the algorithm will be just as sufficient as pseudopod to make the claim definite. But that’s not even a 112 first paragraph issue. It’s a second paragraph issue.

    Can someone please give me the example I am asking about? A hypothetical would be appreciated. Just remember, I’m asking for an example in which the original claim is enabled, but there is not sufficient written description.

  86. I’d watch my arse on the software cases broje, but in 99%+ of mech/elec cases you usually disclose at least one species merely by making the drawing and writing the spec.

    “Company Y earns billions, the university gets nothing. ”

    Good? I don’t see the problem here sir.

    “lead to ”

    That’s right, it lead to the inventions. The discovery itself was never an invention. I don’t see the issue with precluding patentability for things that were never inventions in the first place. I also don’t see the issue with precluding what amounts to draftsmanship trickery putting the discovery itself into a huge generic “hur hur apply this discovery in a practical application” format. In fact, it has been stated many times by the judiciary that this was the intent of 112.

    All you seem to be saying is: hur, our university folks have the same problems as every other field’s university folks in that they do the basic research, but can’t come up with the practical applications for it and don’t reap the rewards therefrom. Physics and many other fields have been “suffering” from this malady for centuries I see no reason to flip it around for people in bio and not them as well. If you want to make basic research patentable then lobby congress don’t achieve it through tomtricky drafting.

  87. Sorry! Second sentence should read “Why can’t . . ” Combination of crappy keyboard and crappy typing skills!

  88. Paul,

    Why does it have to be either the university or the drug company? Why can the pie be cut up in such a way that both get a piece? If the university gets a claim to an assay (not intending to open up a can of Metabolite worms) and the drug company gets their lead drug? Both have done a certain amount of work leading to specific discovery. In Rochester, they had claims to a compound but they never identified one specific compound. Not one. Why are they therefore entitled to dominate all of the compounds? Where’s the good policy in that?

  89. software case that is enabled, but for which there is not sufficient written description

    Choose any that does not have actual code included.

  90. Am I alone in my concerns about the implication of this decision?

    A university discovers a target receptor or enzyme, finds a binding pocket and makes a correct and rational prediction that small molecules binding into that pocket will inhibit the receptor or enzyme and provide a cure for nasty disease X. Pharma company Y using a combination of in silico software such as sold by Tripos and Accelrys and good intuitive medicinal chemistry identifies a first lead compound, with structure-activity analysis finds a good drug candidate within about two years of research and ends with a blockbuster drug. Company Y earns billions, the university gets nothing. At least one pharmaceutical company in at least one case has testified that once the target has been identified, finding a suitable small molecule is research of a painstaking but nevertheless routine character. With molecular modelling and combinatorial chemistry there is more in this argument than one might at first think. In the University of Rochester case there were acid comments about the philosopher’s stone. But the Rochester discovery was not like that – it was the discovery of a molecular target that lead to practical drugs and it did so very quickly indeed.

    Is this really good policy? Does it provide the right balance between more fundamental and nore downstream research? The CAFC thinks so, but the University of Rochester had high hopes of a reward for their fundamental research. Would patents on basic ideas discourage downstream research? Arguably not, since the fundamental researchers would have a strong incentive to find licensees to develop their discoveries and produce the downstream developments that their creativity has made possible. A good case for the Supremes, I think because there are important policy issues involved here.

    No concluded view is expressed about the proper answer to this question. But clearly it is fit subject matter for debate.

    I have not looked at Muncie Gear, but in Europe you cannot claim a combination you have not originally disclosed.

  91. Being a practitioner in the predictable arts the genus/species example does not inform me very well about how this decision impacts the types of claims that I write. Can some one please give me an example of an originally filed claim in a mechanical, electrical, or software case that is enabled, but for which there is not sufficient written description?

  92. ping writes:

    “I love having a chuckle at your “it’s interesting that the US and EP have different law” – it’s sort of like watching a child learn the ways of the world.”

    which is ironic because it exactly captures how some mainland European patent attorneys practising before the 37 Member State EPO contemplate the instructions they get from some single jurisdiction patent attorneys from outside Europe. I continue to find it interesting to contrast and compare US patent law and EPO patent law. Each can gather new insights from the other. But don’t let me interrupt your chuckling.

    Lionel, I’m not sure I understand your question. Not every prosecution amendment at the EPO adds new matter. When the basis of patentability at the EPO is that the claimed subject matter solves an objective technical problem, a claim that fails to recite a feature essential to overcome that problem is deemed to lack “clarity” under Art 84, EPC. And that is the case regardless whether the claim was in there from the start or appeared for the first time through a prosecution amendment.

  93. Max,

    I love exceeding such low expectations and you are mistaken to think that your posts irk me.

    They do not. I love having a chuckle at your “it’s interesting that the US and EP have different law” – it’s sort of like watching a child learn the ways of the world. It makes my heart glow.

    Ned, When you say claims to , enabled, but previously unclaimed subject matter as “new matter.”, do you mean disclosed as meeting the WD?, or disclosed in the Rader sense of enabled, but not in the En Banc sense of WD?

  94. Max,

    In the EPO, a key distinguishing limitation is left out of the claims as filed it may be rejected by the EPO even if fully enabled. Perhaps that is imply new matter to you, but if it was described and enabled in the written description, I would not call that “new matter”.

  95. Ned thanks. If a USPTO Examiner does not have available the “no new matter” tool to resist prosecution amendments to the claims, she needs something else and the “written description” tool serves the purpose. The more interesting point was what to do about an excessively broad claim, present from the filing date of the app, free of matter that is old or obvious but enabled over only a portion of its ambit. Thanks to Ariad, we know what objection lies, in the USA.

    In the EPO, it would be different (not that ping cares). It would be an insufficiency objection.

    So, the different jurisdictions both control the self-same mischief, but use different legal tools to do it with. I think that’s interesting, especially since the USA has toyed with using the insufficiency line instead of the wd line, to object to excessively broad claims filed with the original application documents. What was the case now? I forget.

    ping: why don’t you just skip over my contributions then, if reading them irks you so much? (I don’t expect you to reply to this, of course).

  96. MaxDrei said: “Where else in the world is there a “written description” requirement? Other countries achieve public policy objectives with their “enabling disclosure, already on the filing date” and “no new matter” provisions, without needing any help from a “written description” provision.

    So, I was expecting to find somewhere in this Decision the point that “written description” is the only tool in the US tool-box to stop Applicants amending to claims that contain new matter. I’m still wondering, is this the unstated real reason (“disclosure”) why the judges of the Federal Circuit feel constrained to retain a separate written description requirement? How about Rader?”

    Max, I hope you can now see, with the discussion of Muncie Gear, that the written description requirement is really independent of the enablement requirement. Even Europe now sees the problem and is adjusting, as you said, treat claims to disclosed, enabled, but previously unclaimed subject matter as “new matter.”

  97. Max, thanks for your comment. I have that issue on my plate for real at moment. Your comment gave me a bit of insight as to why the EPO is so concerned.

  98. IANAE, OK. Now take a look at the Muncie Gear example in the very next post. Nothing in the spec suggests that the combination of the housing, anticavitation plate and propeller are an invention, the spec and claims being directed to the these in combination with a deflection plate. Years later, after that combination, sans the deflection plate, has gone into use by the public relying on the specification and claims as filed, the patentee now files claims to the housing, anti-cavitation plate, and propeller combination.

    Your analysis please. (Violation of yesterday’s written description requirement, perhaps?)

  99. MaxDrei,

    it’s right then, is it?

    You really need to pay attention –

    1) The (not-even-hot) air viewpoint is yours, not mine, and

    2) Homey don’t do answers.

    You also mistake me for someone who gives a flip about what the EPO does or does not do with number of claim limitations. You will have to take the En Banc panel to task for their flagrant disregard for the EPO’s position. Oh wait, ,b>they don’t give a flip either.

    Imagine that.

  100. Note that even the two dissenters expressly do not take any position on the merits decision, leaving the rejection of the subject claims unanimous by the en banc panel, and presumably a Sup. Ct. cert grant less likely.

  101. Ping first quotes me then adds his take: Thus:

    “”Call it, if you like, the packing between the skin of the balloon and the diamond at the heart of the balloon cavity.”

    And exactly like what is in the balloon cavity, this means nothing – except a bunch of (not-even -hot) air.”

    and I’m now thinking that “balloon” was an unfortunate metaphor. I should have used a word like “outer skin” to represent the ambit of the independent claim.

    So, ping, with your entertaining, thought-provoking and provocative “not even hot air” viewpoint, when the EPO justifies its 15 claim cap with its assertion that there is usually not room for more than ten dependent claims that constitute viable positions, of narrower scope but enhanced resistance to obviousness attacks on a unitary inventive concept, it’s right then, is it?

  102. One short paragraph that summarizes what you think the holding of Bilski will be after it is digested for several months.

    It will be not unlike anything else that has been fully digested. It will generate a short burst of energy, and a certain amount of excrement that nobody really knows what to do with.

  103. “I would like to see everyone’s prediction for Bilski. One short paragraph that summarizes what you think the holding of Bilski will be after it is digested for several months.”

    The MOT test is one test of patentable subject matter, but not the only test. Blah blah gobbeldegook gobbeldegook blah blah blah.

  104. “I see the return of thousand page apps. Certain art units better adjust the widget allowances, because it will take two weeks just to read the specifications.”

    Not really, all we have to do is reject the genus claim, and then let the attorney come back and point out where specifically its supported in the spec.

  105. True, the enabling disclosure educates the art; but the art normally should, absent compulsory licensing, not be able to actually use the disclosed invention until the patent expires.

    I think you mean “the claimed invention”. The disclosure advances the art as soon as the application is published.

  106. I would like to see everyone’s prediction for Bilski. One short paragraph that summarizes what you think the holding of Bilski will be after it is digested for several months.

  107. I am sure (?) that we will see posts on several of the nuances in the dissent, but I would like to see an article on the Fact versus Law standing.

    Perhaps Rader was making a frontal attack (since he will be assuming the guard), but this decision seems to stir up more mud than it settles.

    Sound byte heaven for Litigators.

  108. “The bottom line is there is more room for everyone to play.”

    Wow, you are not kidding – the dissent makes clear that genus claiming is now dead. If you don’t spell out the species within the four corners, you do not get the species.

    I see the return of thousand page apps. Certain art units better adjust the widget allowances, because it will take two weeks just to read the specifications.

  109. “Call it, if you like, the packing between the skin of the balloon and the diamond at the heart of the balloon cavity.”

    And exactly like what is in the balloon cavity, this means nothing – except a bunch of (not-even -hot) air.

  110. So being from a particular state,
    I now can really see.
    and who that sealed my terrible fate,
    Is now known to me.

    It’s bad enough I’m from there,
    But also in Tennessee.
    Is the most horrific coincidence.
    brought on so I’m not free.

    And then on top of all of that.
    My Father is the worst.
    Either or was fine to him.
    And it’s not just to match a verse.

    Talk about the perfect storm,
    laid out in front of me.
    First there’s one, and then there’s two
    And the worst was yet to be.

    As if I haven’t had enough,
    throughout my early life.
    don’t let history repeat itself,
    bring it to the light.

  111. Great question Ned. I hope Paul Cole is watching this thread because it’s a question for a scholar like him rather than a hack like me.

    I don’t know the Muncie patent or the divl claim so I will assume that it requires the presence of the propeller. Further, I assume that the anti-cavitation plate is mentioned for the first time in the description of the illustrated embodiment, along with the deflection plate.

    Until about ten years ago, the EPO might well have allowed, issued and upheld a claim that does not include the deflection plate.

    But then the EPO began to appreciate that parties were using divisionals to capture inventive concepts not announced as such in the parent app. It has come around to seeing such divls as an abuse that must be stamped out. It does that by refusing (as “new matter”) claims to intermediate generalisations not part of the original written description.

    In Europe, the most important part of drafting is the bit that, in terms of generalisation or concept, is between the broadest claim and the pinpoint disclosure of the illustrated embodiment. Call it, if you like, the packing between the skin of the balloon and the diamond at the heart of the balloon cavity.

  112. MaxDrei, how would Europe handle the facts in Muncie Gear?

    Assume a spec describes an outboard motor. It has a housing, and an anti-cavitation plate above and a deflection plate aft the propeller. The spec talks about the problem of torgue causing the boat to go in circles absent control from the boat’s steersman. The solution is the deflection plate that provides a counter-torgue.

    Years later, in a divisional, but long after the public has begin using the outboard motor, without the deflection plate but with the housing and the anticavitation plates, the patent applicant first claims the combination of the housing and the anti-cavitation plate?

  113. The Feds today cited the Supreme Court for the reason for an enabling disclosure: to put the public in possession of the invention AFTER the period of exclusivity.

    In contrast, MaxDrei, in particular, has argued, vociferously, in other threads that the the reason FTF is better than FTI is because FTF requires EARLY disclosure of an enabling disclosure. This EARLY disclosure IS, according to MaxDrei, what better promotes the progress of the useful arts.

    True, the enabling disclosure educates the art; but the art normally should, absent compulsory licensing, not be able to actually use the disclosed invention until the patent expires. So why all the rush for the EARLY disclosure?

    I suggest for your consideration that, in contrast, it is inventions which promote the useful arts; real inventions, worked out and reduced to practice. FTI promotes such invention in two ways — by allowing inventors to continue to work on their inventions without a need to rush to the PTO — and by rewarding the first inventor and not the first filer. This justifies the investment in new ideas because neither development delays nor inadvertent disclosure jeopardizes the patent.

    So what is it that promotes the useful arts best: security in inventions or an earlier enabling disclosure?

    I pointed out that the US has long prided itself on not allowing compulsory licensing and that compulsory licensing was consistent with the requirement of an early disclosure. MaxDrei countered that Europe does not have compulsory licensing. However, while compulsory licensing is rare, but it does happen in Europe. See, link to dlapiper.com

  114. “This is a proper rejection because there is no description that B and C form a proper sub-genus claim.”

    I do not know about how proper this is Ned. I see where you’re coming from, but I’m doubting it. Severly.

    I ha te to rain on your parade Ned but I examine for new matter in originally filed apps. Although mine pretty much always have support.

  115. PBG you seem to assume that a patent applicant is entitled to a patent on things which, in reality, are impossible for him to truly have invented. Perhaps Rader is right in some circumstances, if your patent applicant couldn’t test them/make the the whole genus without undue experimentation, then neither could a competitor, and thus enablement should kill the claim anyway. Although that is in essence a super enablement requirement as well, just based on enablement rather than WD.

  116. As before, I give simple example to demonstrate why Radar and Linn are wrong.

    Disclosure, species A B and C. Genus claimed, A, B, and C.

    Prior art shows C.

    New claim B and C. Rejected, new matter, no written description support.

    This is a proper rejection because there is no description that B and C form a proper sub-genus claim.

    What if B and C were claimed originally without any description or support for it to distinguish over A B and C?

    Same problem, not so?

  117. They can’t test enough species to satisfy this WD standard, but competitors could easily find a variant to work around the “described” genetic sequence.

    The key is to make sure you protect the best sequences that emerge from the clinical tests, so if the competitor wants to tweak, he/she ends up with a less active agent.

    More importantly, I think this another example of the “tough luck” doctrine in action. The bottom line is there is more room for everyone to play. Those who advocate on behalf of Big Pharma may tell you that this is the worst thing ever because Big Pharma will stop making drugs if they can’t pay their CEOs more than $10 million/yr and to do that they need blockbusters and broad patents.

    Maybe it’s time for a change.

  118. Crouch’s statistics about the “irrelevancy” of a separate WD requirement assumes the PO knew what the separate WD requirement was and was properly examining originally filed claims for proper support.

    We ALL know the examiner do not read the spec., at least not until they have to.

    So, why should we assume the examiners would have any basis for entering a “written description” rejection for originally filed claims?

    Amended claims are a different matter. They ARE examined for support. If they do not have support, they comprise the new matter form of rejection which is common.

  119. I am going to go against the grain and agree with J. Rader. While it will not matter in most cases whether you apply enablement or WD, there are some very important situations where it becomes critical. As for Dennis Crouch’s study, the Courts may not be deciding cases such as this based on WD, but Examiner’s certainly are. They are using WD as a super-enablement standard that is impossible to satisfy with genus claims to genetic sequence.

    A good example is seen in the claims in In re Kubin. While the Fed. Cir. did not address WD in Kubin, basing their decision instead on obviousness, the examiner and lower court had rejected the claims as lacking WD even though the claims were arguably enabled.

    The Ariad court opined that WD is not satisfied for a genus by making the species obvious. However, for a claim to a genetic sequence, it is obvious and routine to make variants of the sequence that would still function according to the invention. However, a patentee could not test sufficient variants (potentially millions) to show possession of the genus.

    In view of Ariad, how else could a patentee protect obvious variants under this WD standard? They can’t test enough species to satisfy this WD standard, but competitors could easily find a variant to work around the “described” genetic sequence.

  120. Actually Max, using an “s” in harmonize is converting to socialism. Keep your socialist s out of our z-based suffixes.

  121. NAL: “I was wrong.”

    *** me has overdramatic, Fred Sanford-style heart attack ***

    “I guess the question now is… what name does Judge Linn use when posting here?”

    I dunno, but that Newman concurrence has Malcolmy fingerprints all over it. Hmmm.

    “I had not grasped that “harmonise” to many Americans means “convert to socialism”.”

    Max, you’ve been around here long enough to know that to many of WE THE PEOPLE, changing anything at all about America other than lowering taxes or increasing mandatory jail sentences is converting to socialism.

  122. Does this decision now mean that the decision in Univ. California on the human insulin gene, where there was enablement but – apparently – no written decision is now somewhat retracted?
    To my opinion the phrasing “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed” could be explained to indicate that it could be argued that the human insulin gene was sufficiently described in the Univ. California case.

  123. Overlooking all the semantic arguments, isn’t a key problem with cases like this the very subjective question of how many enabled species in a specification does it take to have a VALID generic claim [even an original generic claim] in the different subjective views of different CAFC judges? Especially with the expansion of that question by Lizardtech et al into the electrical and mechanical arts?

  124. IANAE, could it be that there is no outcry, when the suggestion is made to remove the separate wd requirement, because at first sight any such suggestion is 100% pro-patent. With no separate wd requirement, that’s one less validity attack available.

    I had not grasped that “harmonise” to many Americans means “convert to socialism”. In now-harmonised Germany, it has come to mean exactly the opposite.

  125. From a practical perspective, this really is a huge waste of time. Talk about overanalyzing a sentence. English is an imperfect language, and we all agree that Section 112 is a mouthful that can reasonably be parsed several different ways. Maybe future statutes should be written in C++.

    I also agree with the point of view that either parsing of the statute leads to the same practical result; erego I concur with Judge Newman to the extent that she says it doesn’t matter whether you call something a written description or an enablement, you necessarily need both. In that sense, I believe, the requirements are not “separate” because they are codependent, even if not entirely coextensive (Newman does not use the words “separate written description,” which comports with Judge Gajarsa’s view that calling written description a “separate” requirement adds nothing but heartburn). It is the word “separate” that really seems to be the bugaboo here. Yes, I said bugaboo. Look it up.

  126. Max, 6,

    I suppose if the tests are going to come out co-extensive it doesn’t really matter that much. A single, simpler test might actually have been better for the system.

    It’s funny, but when we discuss removing the separate written description requirement we don’t get the usual vitriolic ranting that this “harmonization” (code word for communism, I think) would kill innovation in the US like it supposedly did in Europe. Maybe Europe isn’t all that bad a country after all ;)

  127. “The two requirements are not coextensive, and it’s entirely possible to draft a claim that would fail for one reason but not the other.”

    I’m aware that is the standard point of view. But if you read the dissent you’ll see that merely considering the sentence as a whole is what the dissenters want. Well, if we do that, and we accept their proposition that enablement should kill these types of claims then we’re all reaching the same effect from the same statute even though the routes taken were different. If you read their dissent they seem to believe that the enablement requirement will require more than it is currently thought to, and more than “hey look it’s enabled”. They seem to be saying that if you couldn’t pass the current “separate WD requirement” as the majority is supposedly “making up” then you couldn’t pass their enablement test.

    Finish reading the decision and see if what I’m saying doesn’t make more sense. Maybe I’m not explaining it in terms that is explaining my point to you.

  128. I foresee the following qoute to be probelmatic: “But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.”

    How many species is sufficeint? And to whom – the examiner or to a PHOSITA?

  129. IANAE writes:

    “If there were only an enablement requirement, “hey look, it’s enabled” would be a complete defense to any attack on the sufficiency of the written description.”

    I reply: and whyever not? The thing is, Europe doesn’t have the “written description” tool in its tool-box. It worked out, in the 1960′s, that “enabling disclosure in the app as filed” and “no new matter admitted after that” are the only tools needed. The PHOSITA says “I can relate that”. The courts in Europe too.

    Sometimes it is better not to give the patents judges any more levers to play with than the minimum needed, to do their job. Their fiddling with superfluous levers might take the vehicle off course, and might even cause a crash.

  130. Rader is often at meetings in Europe, where “written description” is unknown. Instead, Europe requires that he who puts forward a claim with broad reach must support it with a disclosure that enables the PHOSITA to reach just as far. Nobody has told us yet, how the EPC is a failure because it lacks a “written description” requirement.

    Tell me again, what was it that Newman was telling us, as to why a “written description” requirement, as distinct from enablement, is imperative?

    I don’t get it, but I suspect Rader does. He’s usually pretty smart, isn’t he? Watch him. I suspect he’s trying to harmonise with ROW. However, I haven’t digested the Decision yet.

  131. I mean seriously guys? You’re going to dissent over that? It’s all 112 1st. We don’t need to btch about the separate parts of it if it all comes together to mean the exact same thing to all of us.

    It’s not the exact same thing at all.

    If there were only an enablement requirement, “hey look, it’s enabled” would be a complete defense to any attack on the sufficiency of the written description. Turns out, it’s not. The two requirements are not coextensive, and it’s entirely possible to draft a claim that would fail for one reason but not the other.

  132. What’s really funny is reading the dissents. It seems that both Rader and Linn both just wanted everyone to use enablement to invalidate the types of claims which the majority wanted to use WD for.

    I mean seriously guys? You’re going to dissent over that? It’s all 112 1st. We don’t need to btch about the separate parts of it if it all comes together to mean the exact same thing to all of us.

    It’s like they concurred by dissenting. They’re like, well, we agree that 112 1st should kill these types of claims, but we disagree as to why.

    In any event, I’d support them in raising the bar for enablement a notch.

  133. No surprise here, including the lack of unanimity by the en banc Federal Circuit. Judge Lourie’s view of WD prevailed while Judge Rader’s didn’t.

  134. Regarding, “If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.”

    I think it just as easy to say that if Congress had intended for there to be separate written description and enablement requirements, then the statute would have been written differently. I mean look at the statute:

    The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

    Yes. There has a to be a written description that enables. But how can the claimed invention be enabled without an enabling written description having been provided? Will someone please explain it to me?

  135. One of those rare occasions when I find my mind melded with that of Judge Newman:

    …[T]he en banc court has now been diverted into a scholarly debate about the punctuation in the first paragraph of Section 112.

    In my view, the overriding policy of patent systems requires both written description and enablement, and it is less critical to decide which statutory clause applies in a particular case, than to assure that both requirements are met…

    The practical utility on which commercial value is based is the realm of the patent grant; and in securing this exclusionary right, the patentee is obliged to describe and to enable subject matter commensurate with the scope of the exclusionary right. This is not a question of grammatical nuance of the placement of commas in Section 112; it is a question of the principle and policy of patent systems.

  136. Gajarsa also mentions D in his little piece. They mentioned his article. All I woulda had to do is do a study refuting D’s analysis by looking at actual rejections sent out by the PO and I might have gotten in. This is a frakin historical document that will be read and read and read. I missed a good opportunity here.

    A stunning admission Noise, stunning indeed. Do me a favor and fav this thread.

  137. “The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.”

    I wonder if this will have much of an effect on software patents.

    “The court’s reaction to that problem was tough luck.”

    As it fin should be. If you haven’t invented anything yet then you haven’t invented anything yet. Maybe you should stay in your lab a few hours extra.

    “Judges RADER and LINN each filed opinions in dissent”

    I can’t wait to hear this mess. I already knew Linn was going this way, and Rader seemed to lean this way a bit during oral arguments but I don’t see how they could end up on the wrong side at the end.

  138. Good of Malcolm to recite the “obvious is not enough” passage. It is this that I have been relying upon in recent years, to bring it home to US attorneys that the EPO DG3 position on prosecution amendments to claims is reasonably sane being, as it is, on all fours with their own Federal Circuit, in its “written description jurisprudence.

    At least Europe (I go on to tell them) has a counter-weight (the Protocol to Art 69,EPC) to mitigate the ferocity of this “obvious is not enough” standard.

  139. I guess the question now is… what name does Judge Linn use when posting here? ;)

  140. “Federal Circuit Confirms that Patents Must Meet Both the Written Description and Enablement Requirements of Section 112. ”

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
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    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
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    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
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    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL
    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    O me. Noise. You’re so funny.

    “Linn also mentions Crouch. Well done Dennis”

    They should have mentioned me, it would have been awesome times a google. Look real hard and make sure you don’t see me too.

  141. As expected, the correct result was reached. Well done, Federal Circuit!

    As for this: “actual ‘possession’ or reduction to practice outside of the specification is not enough; and a “description that merely renders the invention obvious does not satisfy the requirement.”

    I wonder what effect this language will have on the oft-used (and oft-abused) practice of submitting declarations, post-filing, to show that a prophesied invention in an unpredictable art works as claimed.

  142. To clarify, that earlier quote comes from a Gajarsa concurrence…

    Here is what Linn had to say:

    “Indeed, a study released after argument that reviewed over 2800 appeals to the Board of Patent Appeals and Interferences (“BPAI”) during 2009 found that only 4.3% of those cases decided written description issues, and that none of those outcomes would change if the PTO could continue to issue new matter rejections under 35 U.S.C. § 132. Dennis D. Crouch, An Empirical Study of the Role of the Written Description Requirement in Patent Prosecution 2 (Univ. of Mo. Sch. of Law Legal Studies Research Paper No. 2010-06, 2010), available at link to ssrn.com. The study concludes that, “in the context of patent applications appealed to the BPAI, the impact of the separate written description requirement is negligible apart from its role in policing the addition of new matter.” Id. at 3. While this research only addressed a small sample of applications and did not consider written description rejections that applicants overcome or do not appeal, these results and the government’s lack of empirical evidence undermine the government’s hypothesis that our patent examination system would grind to a halt if written description no longer applies to originally filed claims.”

  143. I second MaxDrei. Congrats Dennis!

    “Empirical evidence demonstrates that outside the priority context the written description doctrine seldom serves as a separate vehicle for invalidating claims. See, e.g., Dennis Crouch, An Empirical Study of the Role of the Written Description Requirement in Patent Prosecution 12 (Univ. of Mo. Sch. Of Law Legal Studies Research Paper No. 2010-06, 2000), available at link to ssrn.com (analyzing 2858 Board of Patent Appeals and Interference patent opinions decided between January and June 2009 and finding “none of the outcomes of those decisions would have been impacted by a hypothetical change that eliminated the written description requirement so long as new matter rejections were still allowed under the same standard available today”);”

  144. On my first very fast skim through, I could find only in the Linn dissent any discussion of “written description” as a tool to reject claim amendments in prosecution that add matter.

    Where else in the world is there a “written description” requirement? Other countries achieve public policy objectives with their “enabling disclosure, already on the filing date” and “no new matter” provisions, without needing any help from a “written description” provision.

    So, I was expecting to find somewhere in this Decision the point that “written description” is the only tool in the US tool-box to stop Applicants amending to claims that contain new matter. I’m still wondering, is this the unstated real reason (“disclosure”) why the judges of the Federal Circuit feel constrained to retain a separate written description requirement? How about Rader?

    Linn also mentions Crouch. Well done Dennis.

  145. I particularly liked: “If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently.”
    That is what always seemed to me to be decisive, and it reminds me of the famous sarcastic comment of CAFC founder and Chief Judge Markey to patent lawyers: “when all else fails, read the statute.”

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