For Predictable Arts: Written Description of Genus Satisfied by Single Species Disclosure and Fact that Other Members of Genus are Well Known in the Art

by Dennis Crouch

35 U.S.C. 112(a) requires that a patent specification include 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.”  That statutory language serves as the basis for the written description requirement — whose purpose is to ensure that “the inventor actually invented the invention claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc). Claims that were not sufficiently described in the originally filed specification will be deemed invalid or, if a priority filing is involved, the patentee will be barred from relying upon that document for its filing date.

Most often, the written description requirement arises in situations where the patent applicant substantially modified its patent claims during prosecution in a way that creates some distance between the original disclosure and the new claims.  Commonly, the application will include a set of specific disclosures and the patentee will attempt to later amend its claims to cover a broad genus.  (Recognize that in Ariad, the Federal Circuit explained that there can be a failure of written description with never-amended claims.)

In Hologic v. Smith & Nephew (Fed. Cir. March 14, 2018), patentee (Smith & Nephew) claimed the use of a light-guided endoscope for uteral surgery.  The original specification of the parent application did not include the “light guide” language, but did explain that the endoscope included “a fibre optics bundle which provide for lighting at the end of [the] lens.”  During prosecution, the examiner objected to the use of “light guide” in the claims since that term was never discussed in the specification — in response, the patentee amended the specification to state that the aforementioned firbre optics bundle is an example of a light guide: “a light guide such as, a fibre optics bundle which provide for lighting at the end of [the] lens.” (underlined language added to specification during prosecution).  The disclosure also included drawings showing the connection between the lens and the light source.

The specification amendment satisfied the original examiner and U.S. Patent No. 8,061,359 was duly issued to Smith & Nephew.  However, on inter partes reexamination, the new examiner raised the problem again – concluding that the disclosed single example of “fibre optics bundle” language did not satisfy the broad genus of “light guides.”  The PTAB (Board) sided with the patentee.  Although the Board identified the case as a “close call,” it ultimately held that the disclosure was sufficient to satisfy the written description requirement.  On appeal here, the Federal Circuit has affirmed.

The written description inquiry begins with the “four corners” of the original patent specification as read from the perspective of a person of ordinary skill in the art.  To satisfy test, the specification must describe the invention in a way understandable to that PHOSITA and that shows possession of the invention now being claimed.  This is an objective inquiry and the court applies a reasonableness test — does the specification reasonably convey possession of the invention?  Here, the question is whether the disclosure of fibre-optics reasonably conveyed the claimed “light guide.”  As part of the analysis of the test, the court also considers the level of predictability — finding that this field (at least as far as equipment construction) is predictable. That conclusion means that “a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.”

On appeal, it is also important to recognize that satisfaction of the written description requirement is deemed a question of fact.  As such, Board conclusions are given substantial deference on appeal.

In walking through its analysis the Federal Circuit appeared to fully base its decision on two agreed-upon facts:

  1. Everyone agrees that the patent discloses one light guide – the fibre optic bundle: “Board properly relied on the fact that the parties do not dispute that a
    “fibre optic bundle” is a type of light guide.”
  2. Everyone agrees that various types of light guides are well-known in the art: “Nor did the parties dispute that various types of light guides were well-known
    in the art.”

Based upon these two facts (and presumably the predictability of the art), the Federal Circuit found that the validity conclusion appropriate:

Accordingly, we conclude that substantial evidence supports the Board’s finding that Emanuel PCT reasonably conveys to a person of ordinary skill that the inventor had possession of a “light guide.”

The bottom line is suggested by the article title: For Predictable Arts, the written description requirement to a claim for a genus is satisfied by disclosure of a single species of that genus along with the (later proven) fact that other members of the genus are also well known in the art.  

Note here that the challenger also argued that the written description did not show the light guide being “permanently affixed” in the “first channel.” On appeal, the court also rejected those arguments.

Decision here authored by Judge Stoll and joined by Judges Newman and Wallach.

44 thoughts on “For Predictable Arts: Written Description of Genus Satisfied by Single Species Disclosure and Fact that Other Members of Genus are Well Known in the Art

  1. 9

    A snippet from the “other blog” by someone who is NOT named Quinn:

    The chemical arts have a long history of being considered more “unpredictable” than the mechanical and electrical arts. But in our modern world of molecular spectroscopy, computational chemistry, and designer-genes, the science of drug development—while highly sophisticated and complex—is not so nearly as filled with hopeless uncertainty and unpredictability as some would-be drug-patent owners would have everyone believe.

    For all of Malcolm’s mouthing of “his” art units being “grown-up” art units, the special treatment based on some notion of “gee, we don’t know enough to be able to predict things, so let’s have a lower bar for these ‘unpredictable‘ arts, please” seems – like most things from Malcolm – to smack of duplicity.

    1. 9.1

      Yes, it’s true! Chemistry and biochemistry are more predictable than they used to be. Indeed, certain aspects of these fields are very predictable. Also: everybody knows this, including the PTO and the CAFC.

      Does Big Pharma play games trying to “evergreen” drugs by reformulating them or making obvious modifications to them? Of course.

      Does this justify pretending that there isn’t a humongous world of difference between what is required for new “drug” or biotech/genetic modification patents in terms of written description and enablement? Or pretending that the PTO and the courts haven’t been relatively up front about the tiny number of special (and now virtually disappeared) exceptions that were created for patenting in these fields (e.g., by recognizing them as exceptions)?

      No, it doesn’t justify that.

      1. 9.1.1

        What is your point?

        You do not seem to be responding to the actual take-away of the quoted material.

      2. 9.1.2

        You are so intellectually dishonest that you leave a green slime trail behind wherever you go.

    2. 9.2

      Kind of interesting that figuring out a portion of a DNA molecule is probably more unpredictable than figuring out what a new molecule does.

      Kind of funny that the chemistry people try to pretend that they are special when in fact it is more predictable than information processing in that information processing is building new things and chemistry just has a few tools and is endlessly just testing new molecules (and we can make any molecule based on it formula.)

      1. 9.2.1

        Kind of funny too that figuring out how the DNA molecule works is a lot like information processing and the Justices totally disrespect the science.

        The left ones (the likes of Ginsburg) believe their thoughts are processed by their spirit in the ether.

  2. 7

    ICU Medical, Inc. v. Alaris Medical Systems, Inc. makes for an interesting contrast to this case (e.g., 112 analysis of adding an element vs. removing an element from the original claims)

    link to patentlyo.com

  3. 6

    OT but …. Elizabeth Holmes, founder and chief executive of the blood-testing company Theranos, has been charged with an “elaborate, years-long fraud” by the Securities and Exchange Commission in which she and former company president Ramesh “Sunny” Balwani “allegedly deceived investors into believing that its key product — a portable blood analyzer — could conduct comprehensive blood tests from finger drops of blood,” the SEC said Wednesday.

    Excellent news. It’d be nice to see charges brought against the con artists trying to peddle “self-driving cars” to the public (and trying to get taxpayers to fund the debacle). We can only cross our fingers and hope.

    1. 6.1

      “Cruise cars frequently swerve and hesitate,” Efrati reports. “They sometimes slow down or stop if they see a bush on the side of a street or a lane-dividing pole, mistaking it for an object in their path.” In one case, Efrati says, Cruise employees trimmed a bush ahead of a demonstration for journalists to make sure the car wouldn’t swerve while driving past it.

      Cruise employees have the option of riding in Cruise vehicles as they travel around San Francisco, but there’s a big downside to doing so: self-driving car rides are often slower than a ride in a human vehicle—sometimes as much as 10 to 20 minutes slower. A big reason for that: “some San Francisco intersections and streets are ‘blacklisted,’ in some cases temporarily, and the cars must take circuitous routes around them.”

      An intersection might be blacklisted because its traffic light is too faint, because it has a complex roundabout, or because it requires a difficult lane merge.

      Anyone involved in promoting this g@ rbage is a self-serving @ h0le.

      But what we really need, clearly, is more patents on methods of driving past a bush without swerving to far away from it. That would promote the progress for sure. Right.

      1. 6.1.1

        Your feelings are noted.

        Again.

        1. 6.1.1.1

          It does feel like we are in therapy with MM. He just tells us how he feels about things and whines endless. This despite the almost complete dismantling of the US patent system.

          His side has completely destroyed us. They are one or two more blows from complete unconditional surrender.

      2. 6.1.2

        Can you identify a single patent claim issued in the past 10 years that you agree should have been granted??

        1. 6.1.2.1

          That is a request I have made of MM many times. Well, I didn’t put a time limit on it. So, don’t expect an answer.

          1. 6.1.2.1.1

            You forgot to qualify the answer that you are seeking, Les.

            Ask for an inte11ectually honest answer that is to the point sans empty mindless ad hominem.

            (no matter what time limit you put on that type of request, you will never see a cogent reply that satisfies the qualifications)

  4. 5

    The corollary to this is that in the predictable arts the disclosure of a genus precludes patentability of a species within the genus absent a showing of unexpected results.

    Now consider two other facts:

    The use of logic and rules to process data is quintessentially predictable.
    Programmable computers exist to apply logic and rules to data processing.

    What on the earth did the CAFC think it was doing when it drove a truck through the patent system so applicants could pursue claims to logic carried out by a computer in functional terms???

    It’s a tragedy and a farce.

    1. 5.1

      As asked below (and still awaiting a cogent answer), tell me Malcolm, where is “predictable arts” defined in the law as written by Congress?

      (Ben, “right after” is not a proper citation – tell me please explicitly the words that you think are defining this. Lacking this, and seeing you align yet again with Malcolm is NOT a point in your favor)

      1. 5.1.1

        where is “predictable arts” defined in the law as written by Congress

        “Mommy, Congress never said the moon wasn’t made of cheese. Anybody who doesn’t want to debate whether the moon is made of cheese is against critical thinking! I’m a very serious person, Mommy! I’m very concerned about ivory towerism which is a super serious concern.”

        Not enough b a r f bags in the world to deal with your b @ loney, “anon.”

        1. 5.1.1.1

          Brush away the ad hominem – and there is NO ANSWER from you Malcolm.

          Maybe try to provide an answer.

  5. 4

    What I have been saying. Functional claiming is quite proper when claiming old and well known elements. The invention itself is not in the old and well known element. The claim covers the disclosed example and equivalents, which are every other way then known to the skilled artisan.

    This gets down to the range of equivalents to old and known structures.

    The reasoning should apply equally as well to MPF equivalents, because these extend only to known equivalents. In essence, the two topics are the same topic.

    1. 4.1

      In essence, the two topics are the same topic.

      In essence, you are full of it.

  6. 3

    …whose purpose is to ensure that “the inventor actually invented the invention claimed.”…

    1. Everyone agrees that the patent discloses one light guide – the fibre optic bundle: “Board properly relied on the fact that the parties do not dispute that a
    “fibre optic bundle” is a type of light guide.”

    2. Everyone agrees that various types of light guides are well-known in the art: “Nor did the parties dispute that various types of light guides were well-known
    in the art.”

    Everyone agrees I possess at least one dollar. Everyone agrees that everyone knows other dollars are possessed. Ipso Facto, I possess all dollars.

    Solid logic there, Federal Circuit.

    The fact that the art knows something doesn’t change the fact that THIS INVENTOR may not possess that information. You know what the only evidence of what this inventor possesses is? The document that this inventor wrote. The knowledge of skill in the art can certainly inform upon the meaning of terms in the spec, but it can’t create a genus out of a species.

    That being said, this is an example of the FC’s mistake not being a big deal, because if the fact finder found the other way they would have upheld that too.

    1. 3.1

      iwasthere, I disclose a nail and claim a means for attaching. Do I get a scope only to the nail I disclose or to all nails known at time of filing by skilled artisan that are equivalent to the nail disclosed?

      1. 3.1.1

        No, you say the same thing every applicant does – the disclosed means for attaching is only a single exemplary embodiment and the art knows of many means of attaching.

        Just because your attorney malpractices and doesn’t disclose the genus doesnt mean we reconfigure the entire law to fix your single issue.

        1. 3.1.1.1

          What malpractice are you imagining?

    2. 3.2

      “The fact that the art knows something doesn’t change the fact that THIS INVENTOR may not possess that information. ”

      Yeah, but you know that common sense that the Supremes let in the door in KSR? It cuts both ways:

      link to youtube.com

    3. 3.3

      The fact that the art knows something doesn’t change the fact that THIS INVENTOR may not possess that information

      Are you under some misguided notion that a patent application must contain EVERYTHING that an inventor may possess?

      (that’s not the requirement – and you should know better)

    4. 3.4

      Re: “the only evidence of what this inventor possesses is .. the document [spec and claims] that this inventor wrote.”
      Yes, but the test is what does what the inventor [or his attorney] wrote mean to a POSITA, and as the Supremes noted several times in KSR, the POSITA has common sense as well as ordinary skill [and thus ordinary knowledge] in the art that may not need to be spelled-out in the spec for some items or features.
      Also, failure to factually dispute, with declarations or other evidence, important fact assertions of the other side in inter partes proceedings can be used against you, as demonstrated here.

  7. 2

    How does this result for WD interplay with the doctrine of equivalents?

  8. 1

    Where is “predictable arts” defined in the law as written by Congress?

    1. 1.1

      Right next to the language that authorizes non-MPF functional claiming.

      1. 1.1.1

        Please provide a specific citation.

        Thanks.

        1. 1.1.1.1

          It’s immediately after the section in the 1952 act that authorizes non-MPF functional language. You’ve repeatedly said that the 1952 act does so (while always declining to identify where), so surely you know where to look.

          1. 1.1.1.1.1

            That’s not an answer.

            Not even close, Ben.

            1. 1.1.1.1.1.1

              You’ve repeatedly handwaved features into the 1952 act. This is a far more specific direction than those handwavings. Only someone who can’t show where the 1952 act authorizes non-MPF wouldn’t be able to find it.

            2. 1.1.1.1.1.2

              I would note that anon could EASILY prove me wrong by indentifying the language immediately following where the 1952 act authorizes non-MPF functional claiming.

              1. 1.1.1.1.1.2.1

                Still not an answer, Ben.

                Still not even close.

                1. Nothing prohibits functional language outside of a MPF element. A MPF element lacks recited structure.

                  There is nothing wrong with reciting definite structure and adding functional limitations, structural, temporal, or any other limitation to it.

                  It is “purely” functional limitations that are prohibited outside of 112/6.

              2. 1.1.1.1.1.2.2

                Ben, where in the 1952 act does it authorize non-functional claiming??

                1. While the banter expands to include rhetorical questions, my initial question was not rhetorical.

                  So far we have only seen two NON-answers:
                  Ben, with an attempt to switch the topic, and
                  Malcolm, who only wanted to v0m1t mindless ad hominem and not even come close to the topic.

                  I will also add here that this phantom “crutch” (phantom, as the designation of “predictable arts” has NO basis in what Congress has written) is really (and merely) an excuse concerning arts in which the lack of knowledge is a driver as to the notion of “predictability,” and one should question why some lack of knowledge should drive a lowering of standards.

                  I would also add an idea not my own (see the ongoing points provided by Greg Aharonian) concerning the fact that in the atypical “unpredictable arts” fields, advances in computing technology have automated brute force methodology and to a large extent such methodologies are eliminating the notion of “unpredictability.” Greg’s point in this is that the CURRENT arguments being advance in other art fields (typically anti-patent arguments) shall come home to roost, and if followed to their logical conclusions, would make ALL biochem and other small or large molecule advances de facto obvious.

                  I mention this because while different, Greg’s argument does in fact mirror the device that I employ here. That device is the reflection of the anti-patent position that is reflected in its logical extension (the Big Box of Protons, Neutrons, and Electrons). As repeatedly pointed out to Malcolm, this device reflects Malcolm’s “logic,” and is used to point out that his own logic is entirely self-defeating.

                  Maybe he is too busy [shrugging] and [dancing] in his mind to be able to follow where his own “logic” leads.

                  Maybe he is too lazy.

                  Maybe he is simply not intelligent enough.

                  Maybe he is intelligent enough to realize why his arguments are a FAIL, but simply does not have anything on his script to counter those points.

                  In any regards, the point here as to where the notion of “predictable arts” has a tie to the actual patent law as written by Congress is a fairly direct and important question that deserves an inte11ectaully honest answer.

                2. the reflection of the anti-patent position that is reflected in its logical extension

                  Okay, kids, time to put the spray paint away.

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