Examining the Specification

by Dennis Crouch

Earlier this month, I posted a short essay about recent enablement cases at the PTAB.  Section 112(a) includes three disclosure requirements: written description; enablement; and best mode.  I would further divide written description into two categories: new matter and Ariad-style.  Thus we get:

  1. New Matter Written Description: Any amendments made to the claims during prosecution must be supported by the originally filed specification.  In particular, the original specification must show ‘possession’ of the newly claimed invention.  During prosecution, this is also captured under 35 U.S.C. 132(a) (“No amendment shall introduce new matter into the disclosure of the invention.”)
  2. Ariad-Style Written Description: Originally filed claims may also lack written description if the four-corners of the specification fail to show the inventor was in possession. The court in Ariad explained that a “a vague functional description” may be insufficient as it likely describes the unpatentable problem rather than a patentable solution.  Ariad Pharmaceuticals et al. v. Eli Lilly and Company, 598 F.3d 1336 (Fed. Cir. 2010) (en banc).
  3. Enablement: The original specification must enable a person of skill in the art to make and use the invention without undue experimentation.
  4. Best-Mode: The original specification must disclose the best mode for carrying out the invention–if one is known by the inventors.  Best mode can only be raised during prosecution and is not available as a validity defense in litigation. 35 U.S.C. 282 (as amended by AIA 2011).

Of these for 112(a) rejection types. I suggest that patent examiners are primarily focusing on Number 1, New Matter Written Description. These new matter rejections are the most straightforward: (a) check to see if newly added language is supported by the specification; (b) if no, reject.  Although the US rules on new matter are looser than some other jurisdictions (such as EPO), a prima facie rejection is still an ‘internal research project’ that can largely be accomplished with a quick scan of the document and CTRL-F.

The other three types of 112(a) rejections are more difficult for patent examiners because they require expansive analysis facts–delving into what would be understood by someone of skill in the art and asking questions about ‘what is missing’ without the aide of a comparison guide. In the case of best-mode, the inquiry requires subjective information about what was known by the inventor at the time of filing–something that is generally impossible for the examiner to research absent a request for information from the inventor.

I would love to hear your thoughts on this topic.

126 thoughts on “Examining the Specification

  1. 19

    “I would love to hear your thoughts on this topic” said Dennis, and I hope he doesn’t regret the overwhelming response, as there are quite a few consistent insider reality observations in these “108 thoughts on “Examining the Specification” [for 102 compliance] that would not be found in any normal academic sources.

    1. 19.1

      sorry, 112 not 102.

  2. 18

    Gee, thanks, guys, for your answers to my #16, about the long-term consequences for WD examination at the USPTO of the AIA switch to First (Inventor) to File namely a ratchet effect, over the next 25 years or so, on the severity with which WD support gets to be scrutinised in hard-fought inter-Partes proceedings where priority between different Applicants is disputed.

    Paul suggests that the “mess” under First to File in Europe can all be blamed on Art 54(3), the provision that excludes secret prior art from the obviousness determination. Paul, I don’t think so. I think instead it is an inevitable result of the switch to FtF. But I do agree, that the presence of Art 54(3) in the EPC throws the emphasis on settlement of the issue by cross-licensing. You are not saying though, are you, that the “mess” is a cross-licensing mess. So, thinking cause and effect, what if it is FtF that caused the mess and x-licensing, prompted by the EPC’s Art 54(3) is the way out of the mess? How about that then?

    NW supposes that the consequences of shifting to FtF will be de Minimis but proposes to wait and see. Fair enough.

    And anon points to the vanishingly small number of interferences under FtI and supposes that the number of priority contests under FtF will not be any larger. Or if they are, they will be resolved under the current WD standard. Good luck with that prediction, I say.

    Night, your comment is the most accurate. The proof of the pudding lies indeed in its eating, a task which you and your colleagues are going to be performing for the next 25 years. At least. If only in the CRISPR-cas9 cases filed under the AIA. Unless of course the dispute dissolves into a x-licence settlement.

    1. 18.1

      I point to much more than mere interference practice (and would but add that such was subsumed in full into the AIA’s derivation practice).

      Once again, “being polite,” while ign0ring critical points is down right Rude — whatever your “choice” of ‘responding by interest’ may be.

    2. 18.2

      Re: ..the severity with which WD support is scrutinized and disputed in U.S. inter-partes proceedings because it impacts the patent owners priority date relative to the cited prior art. I.e., continuations, divisionals, and CIPs.
      I have been paying attention to that in all of the IPR decisions having that issue which make it onto this blog by being disputed at the Fed. Cir.. That is obviously not scientific sampling, but I only recall 4 offhand, and in each case the patent owner lost its original application priority date. I would attribute that to most patent attorneys and agents being honest enough NOT to put new matter in what they were calling continuations and divisionals.
      However, there was one seemingly bizarre Fed. Cir. decision in which, as I recall, the effective date of a regular application claiming provisional application filing priority date as prior art was held to be controlled [and changeable] by what was subsequently claimed, rather than the whole contents of the provisional application?

      1. 18.2.1

        Paul, what I am trying to stress is that the competition (under First to File) between rival filers is what will sharpen up the law on what constitutes a “writen description”. Whether any given claim in suit is entitled to the filing date of an earlier-filed patent application is a related but different enquiry. I think it is the disputes between the respecitive patent applications of two well-funded rival but independent parties, to determine which of them “filed first” that will sharpen up the law.

        1. 18.2.1.1

          Rephrased: “Will FITF disputes between respective applications of well-funded rival parties to determine which of them “filed first” will sharpen up the 1o2 law even absent priority date disputes.”
          Yes, except, more accurately, as for CRISPR-cas9, these are more likely to be disputes as to which, if any, application spec had both the 112 support and early enough filing date [or prior publication date] to get the broad and/or generic patent claims to the invention, rather than only narrower disclosed species claims, or nothing.

          1. 18.2.1.1.1

            Paul, you say “more likely”. I daresay you are right. But how much “less likely” is my scenario? As NW says, the proof of the pudding is in the eating. The point is, not eating the pudding is not an option. On the contrary, with the AIA it is unavoidable.

            1. 18.2.1.1.1.1

              Pardon Potential rePeat due to Count Filter…

              Your comment is awaiting moderation.

              May 2, 2022 at 7:57 am

              “But how much “less likely” is my scenario?”

              Given as I have deconstructed your “ii)-iv)” from your assertion of “i),” you have provided NO sense of cogent “likelihood.”

              And thus, your question to Paul is bogus.

      2. 18.2.2

        Paul,

        as I recall, the effective date of a regular application claiming provisional application filing priority date as prior art was held to be controlled [and changeable] by what was subsequently claimed

        I remember that case, and thought that it was abundantly clear as to how the law is written so as to effect the result reached.

        As I also recall, you seemed to have a hard time understanding the result back then as well.

        I would posit that your lack of grasping the case does not mean that THAT case is odd.

      3. 18.2.3

        That case, was, I believe, ” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 116 U.S.P.Q.2d 1045 (Fed. Cir. 2015). And that case is pre-AIA law.

        1. 18.2.3.1

          Thanks WE – I think the dialogue ship has sailed on this thread – but it would be great if you pull this up the next time the subject is discussed.

  3. 17

    On the subject of difficulties for USPTO Examiners, to do an adequate job, I want to chip in with the consequences of i) flipping to First to File ii) the increasing propensity for corporations independently to file on much the same subject matter at much the same time iii) the logic of their filings is to put obstacles in the way of their competitors (as opposed to taking to issue merely a picture claim of their own product design), and iv) watching ever more closely the 18 month A-publications of the emerging filings of your competitors.

    The consequence: an ever-increasing likelihood of prosecution amendments that aim to capture what you’ve just seen in your competitor’s A-publication. New matter, in other words. And why, to secure the prize of the rights that go to the party that was “First” to file on the subject matter of commercial interest

    How to resolve the priority contest between two corporate filers who filed at much the same time (say, CRISPR-cas-9) under the AIA, without recourse to interference proceedings? The ONLY way to do it is by close inspection of the respective disclosure contents of the respective applications as filed. No longer those endless equiries into conception, diligence and reduction to practice. Instead, everything hangs on what your patent attorney drafted and when they filed it. On just that one document hangs everything.

    What budget, what legal forces, will those respective corporations devote to this crucial task, of disputing the priority of the respective filing events? CRISPR-cas-9, anybody.

    So, all that stuff in this long thread surmising that a “loose” approach to WD is acceptable is, for me, under First to File, soon to come under increased scrutiny. Perhaps this is what prompted Dennis’s piece?

    Anybody disagree with my prediction?

    1. 17.1

      The proof is in the pudding.

      How many claims are there that have been asserted that you should be invalid under 112?

      That is the test. I don’t see many. Maybe one now and then but it is always a border case. The reality is that trying to assert a claim that isn’t supported by the specification is not going to past muster in a Markman hearing.

    2. 17.2

      Re the “First to File .. increasing propensity for corporations independently to file on much the same subject matter at much the same time ..[and] put obstacles in the way of their competitors” who filed first by claiming unobvious narrow features not fully disclosed in the first to file application.
      Max, I am aware of this EPO mess, which too often is used to force cross-licensing. It is primarily due to EPO [and others] “novelty only” [instead of 103] prior art treatment of prior filed but later published applications, which the U.S. does not have.

      1. 17.2.1

        Paul – now that’s an interesting Sovereign-difference observation.

    3. 17.3

      Errors of logic and the odd (but certainly not new) search by MaxDrei for confirmation bias heavily salted with the EPO Uber Alles (round and round the same small block) syndrome.

      with the consequences of

      i) flipping to First to File

      ii) the increasing propensity for corporations independently to file on much the same subject matter at much the same time

      iii) the logic of their filings is to put obstacles in the way of their competitors (as opposed to taking to issue merely a picture claim of their own product design), and

      iv) watching ever more closely the 18 month A-publications of the emerging filings of your competitors.

      First off, MaxDrei ASSumes some type of causal connection between i) and the the rest – as well as assumes that such was somehow absent in its entirety (ever) from the US.

      It just is not so.

      His ii) is nothing more than conjecture, and whether or not “increasing” actually exists is more so likely a condition entirely divorced from whatever type of filing system one has.

      His iii) has ALWAYS BEEN a consideration of the US system – and is again existent regardless of type of filing system.

      Whether iv) is true or not likewise is also likely immaterial to type of filing system. For example, long before the US switched, the practice of keeping a Continuation alive so that any “watching ever more closely” the moves of competitors – and this is larger than mere filings – was in play.

      It is beyond banal then to start with i) and assert that 11)-iv) somehow support this EPO Uber Alles view.

      Further: ALL of this is actually immaterial to the duty of examiners to examiner under the law. Examination is not so dependent on exterior post hoc considerations.

      Further still, “Instead, everything hangs on what your patent attorney drafted and when they filed it. On just that one document hangs everything.

      Has been pretty much true all along (are you aware MaxDrei, just how small a slice interferences have EVER been?)

      And yet further still, this is nothing more than a truism – and fully applied in the US prior filing system. This more reflects the basic of US drafting practice, calling forth the Ladders of Abstraction. As it most often the case, what an inventor presents to a practitioner is NOT the full breadth and scope of the invention, but rather is typically more or less a mere embodiment.

      I am paid, and paid well (as are many US practitioners) to understand this and to draft a legal document that will be worth more than a mere picture claim of an embodiment. OUR JOB is to draft a flexible and creative expression to which (often – this will depend on the discussed aims with the client) a family of continuations and “keep-out zones” for the Client’s business may be captured.

      THOSE considerations are what informs “those respective corporations [to] devote to this crucial task…

      Anybody disagree with my prediction?

      Everybody SHOULD.

      1. 17.3.1

        Just so there’s no misunderstanding, anon, what I’m imagining, here on Planet Mars where First to File has been the system since time immemorial, is that the law is shaped not by PTO Examiners issuing FAOM’s but by the courts of appeal in high budget, high value, highly lawyerly, disputed cases. The FtF WD law that emerges from such cases, in the next two decades, the USPTO then has to apply, ongoing, day-to-day.

        Yet again, I cite the ongoing priority contest between the different CRISPR-cas9 protagonists, at the EPO and in the USPTO. When the turn comes for the USA to adjudicate priority for those rival applications filed under the AIA, then we shall begin to appreciate how WD comes to be examined under First Inventor to File.

        1. 17.3.1.1

          Wow – you are seriously dense.

          You want to make an assertion of a conclusion, in a comparative stance, all the while based on “experience” in only one system and not be bothered with any understanding of the other system — and worse yet, not be bothered with any of the points provided that show that your ii) through iv) are not tied to your i).

          Please don’t insult me with the line of “Just so there’s no misunderstanding.” You are indulging yourself in misunderstanding.

        2. 17.3.1.2

          Max, interferences and other future legal messes from different CRISPR-cas9 patenting protagonists apparently have some important enablement, written description and priority disputes, but they are not good U.S. FITF test cases.* Only later-filed “improvement” applications thereon are AIA applications, not the earlier ones now in an interference.
          *[These dispute are also confusing lay observers who do not understand that the enablement and WD descriptions required to get a valid patent claim are not the same as using that same patent as 103 prior art against later filed applications and patents in the U.S. for whatever it teaches a POSITA. ]

          1. 17.3.1.2.1

            Yes, Paul, I do understand that under the AIA it can only be the “improvement” filings; that the main, early, pioneer filings were before the AIS kicked in. One can imagine that the parties will settle rather than scrap over which of them was first to file on any given one of the imprvements.

            1. 17.3.1.2.1.1

              From what I heard indirectly from a source in the biotech industry [not a patent attorney] CRISPR-cas9 is a bigger mess than that. Apparently because some companies may have already paid for licenses from the party owning the application with the Nobel Prize winners names on it, apparently assuming that was going to be the patent they would most need to license?
              BTW, this kind of unpleasant unpredictable risk-impacting of corporate product planning and investment was one of the arguments for the AIA eliminating interferences for subsequent applications.

              1. 17.3.1.2.1.1.1

                That all makes sense, Paul. Trouble is, each of the CRISPR rivals will be convinced that everybody else will need a licence under their particular claims too. The AIA eliminated one category of “mess”, sure, but the “mess” arising under First Inventor to File, when multiple parties file on much the same subject matter at much the same time can be resolved efficiently and fairly only when there is no longer any “looseness” on the issue of WD.

                1. when multiple parties file on much the same subject matter at much the same time can be resolved efficiently and fairly only when there is no longer any “looseness” on the issue of WD.

                  Yet again (in a seemingly unending loop), MaxDrei makes a wishful assertion, and yet cannot come to address the counterpoints presented. Namely, to his (same) “i)” to which I have debunked his “ii)-iv),” he asserts (now, with the further lamentation of “fairly only”) his “no longer any ‘looseness’)” – without any actual support.

                  Whether or not law is fine-tuned by well-monied adversaries pitting against each other for valuable IP, MaxDrei’s continued bland and even banal assertions have not been shown to contain any reasoning thereto – cogent or otherwise. There is no there there.

                  Of course for valuable IP, well-monied adversaries are going to expend both money and intellectual capital, and it should thus be a given (and quite regardless of MaxDrei’s asserted starting point and any supposed “fairly only” basis of such) that legal development will ensue — in any Sovereign, and I daresay, with any starting point.

  4. 16

    When I was an examiner, I literally had a checklist that I would xerox and check off for every application I examined. For written description, I would look to see in the applicant provided tech on the point of novelty. For new matter, I would always let the original examiner have a chance to examine the continuation so he or she could spot new matter. Best mode was satisfied so long as a word search has some different modes disclosed in the spec. Enablement was rarely used but only for the applications that lacked any technical description at all. Enablement was for those applications that were written on a bar napkin somewhere that were obviously not thought out. Frankly, taking the time to write out the In Re Wands analysis was not worth the time or effort in 90% of the cases. I would never make a rejection where there was decent content or an honest argument by the applicant that pointed out the tech in the spec. Examiner see everything under the sun and some applications are a joke where somebody is just trying to claim jump some new technology.

  5. 15

    Just based on my experience I think you are right, but the rationale unfortunately is not based on caselaw or changing filing behavior. Rather, Examiners simply type in words/phrases, and if they don’t find them EXACTLY they give you a WD rejection.

    Then there’s the new creep of pharma type rejections for SW cases, meaning, you show an embodiment of an apparatus A that does X, and you claim it that way The Examiners now play a game where they say “oh, but you don’t have a description for ALL versions of A, so you can’t claim it that way.” I understand that in chemical cases it could be said that “combining A+B to treat a condition” is too broad and not enough to maybe catch all “conditions” but in SW cases I don’t know what the counterpart is. In my case, I literally said “end-end encryption” (or words to that effect) and showed a three device example where the Tx, Rx and intermediary all did encryption. When I presented a claim which said (effectively) “any devices in the communications channel being configured to do encryption” the Examiner gave me a WD description. Yet, the only example shows this. So, yeah, its getting goofier but not for any rational reason.

    1. 15.1

      Examiners have a variety of understandings of LizardTech ranging from “lizard what?” to “almost everything involving software is invalid under 112(a).” That window is larger than it should be (say “Thanks, OPLA!” for that), but even if PTO management wasn’t cowardly the CAFC isn’t giving them much to work with.

  6. 14

    The English definition of “abstract idea” would mean that the claim is not enabled. For example, “disassociated from any specific instance.” That would mean that the claim is not enabled. As the specification then would have ZERO embodiments of the claims.

    So, Alice would be unnecessary if “abstract idea” had an ordinary meaning as Alice would be a subset of 112.

    Can you find a definition in the OED where the claim would be enabled?

    So what does this mean? It means the Scotus created a new definition and tagged it onto “abstract idea”, but did not give us the definition of “abstract idea.”

    1. 14.1

      Technical diagrams are abstract and self-enabling. In the same sense, written software code is abstract and self-enabling; if the code executes properly, its both abstract and enabled.

      The problem with Alice is the nature of the utility of information. How to tune a driveshaft. Where to find paternal DNA. When to sell a stock. Where to find Victoria’s Secret. When to avoid an obstacle. How to dial a phone number. The permutations of useful, enabled and abstract ideas is endless.

      1. 14.1.1

        Y
        A
        W
        N

        Your claptrap impresses no one.

      2. 14.1.2

        In the same sense, written software code is abstract and self-enabling; if the code executes properly,

        You are not even being self-consistent — as if code is executing, then that written code is FOR MACHINE CONSUMPTION.

        That broke my eye-roll emoji machine…

      3. 14.1.3

        Martin, no.

        And you didn’t respond to anything that I wrote.

        Ladders of abstraction take your abstract ideas together with the specification and the what a person skilled in the art knows and turns it into not an abstract idea.

        What you are talking about is an abstract representation that is fleshed out in the specification in view of a person skilled in the art.

        1. 14.1.3.1

          Lord Narcissus (marty) only cares about his shallow reflection — he does not care one ounce about actual patent law.

          1. 14.1.3.1.1

            It’s ALWAYS projection time ain’t it anon? Your syntax alone (and it should be taken alone anyway since its mostly devoid of meaning) is an ironic demonstration of the distorted love of one’s own reflection…

            NW, you say something can’t be abstract and enabled, which is the same thing as saying something can’t be abstract and useful.

            What am I missing there?

            1. 14.1.3.1.1.1

              Marty – as always you are multiply wrong.

              1) no projections from me – clearly the one in love with their own views, to the exclusion of the actual law is you.

              2) my syntax is perfectly fine. You confuse self-assurance from Knowing the law with some type of of self-love, but it is simply different.

              3) as to meaning, well that only appears that way to you because you refuse to understand the terrain of patent law — I keep on telling you to bounce my points off of your (and your brother’s) patent attorney, but you choose not to. Really no surprise with that.

              4) “useful” and “enabled” are very different things under patent law.

              You need to get some help there pal.

            2. 14.1.3.1.1.2

              Martin, not sure why you are brining in useful.

              But something could be abstract and useful I think as a general principle. To reduce cost and improve reliability, build machines with the same functionality and fewer parts.

              1. 14.1.3.1.1.2.1

                I’m not sure how you separate utility and enablement as they relate to abstraction. You say something can’t be Abstract and enabled. Something not enabled can’t be useful.

                So you are suggesting that nothing useful can be abstract, because to be useful, it would have to be enabled.

                What guild-specific meaning as a term of art does “enabled” possess that does not meet the syllogism?

  7. 13

    A couple comments from a French corporate IP professional.

    – Pre-AIA best mode was a pain, fortunately the AIA has made it toothless.

    – The enablement requirement is another story. It is one thing for PTO examiners not to look at this issue (and this is true at the EPO as well) and leave it to inter partes proceedings, for the reasons put forward in previous comments. It would be something entirely different to make this the acceptable rule for primary examiners. The patent system is based on the quid pro quo between the award of exclusive rights and the public disclosure of knowledge, if the enablement requirement is dropped it would frustrate the public policy objectives of the system. Qualitywise it would indeed be a bad signal which would seem to encourage the filing of paper applications.

    It is also to be noted that the enablement requirement applies to prior art references. Should this requirement also be suppressed ?

  8. 12

    Career examiner here. If an examiner takes a potential enablement rejection and asks a QAS (quality assurance specialist) about it, the first thing out of their mouth will be “Wands factors”. in re Wands is the precedent on undue experimentation and the factors is list of things you’re supposed to consider for a hypothetical case. we get no training on how to address wands factors, no examples, there are no form paragraphs to assist, there is no pronged “wands test”, and QAS’s are notoriously bad communicators. the result is that an examiner will talk themselves out of making an enablement rejection, sometimes twisting it into indefiniteness instead. Some SPEs think you have to have a sentence addressing each and every Wands factor. these SPEs also have high turnover rates.

    1. 12.1

      That’s funny. I’ve only seen the Wands factors show up a couple of times.

      My bet is that it is AU dependent like so many other things at the PTO.

      Let’s face it, prosecution in some AUs is completely different than in other AUs. It is crazy but I’ve learned how to get along in all the AUs I work with.

    2. 12.2

      Wands factors are not a one-size-fits-all.

      Much like ANY case law, there is a legal process of properly applying such to the case at hand.

      Random is also a “career examiner,” and he often whines about how He (the Royal He) has to go up against those that KNOW the law and that general examiners just do not.

    3. 12.3

      “we get no training on how to address wands factors, no examples, there are no form paragraphs to assist, there is no pronged “wands test”,”

      Thank you for that. I’m a former Examiner from 20+ years back, and you’ve confirmed that nothing seems to have changed at the USPTO in terms of training. For all the training Examiners get, there still seems to be a huge lack of it when it comes to certain things like explicit skill level determination, Wands factors (of which skill level determination is one factor).
      In my experience, most enablement rejections disappear after traversals that discuss how the rejection failed to provide any real analysis addressing the Wands factors.
      I’m curious. How do you address the skill level determination factor? As you said, there’s no training, and the MPEP is deficient with regard to any actual analytical framework for determining the level of skill in the art.

      1. 12.3.1

        This sounds expensive to litigate…

        2164.01(a) Undue Experimentation Factors [R-08.2012]
        There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:

        (A) The breadth of the claims;
        (B) The nature of the invention;
        (C) The state of the prior art;
        (D) The level of one of ordinary skill;
        (E) The level of predictability in the art;
        (F) The amount of direction provided by the inventor;
        (G) The existence of working examples; and
        (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
        In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The court held that the specification was enabling with respect to the claims at issue and found that “there was considerable direction and guidance” in the specification; there was “a high level of skill in the art at the time the application was filed;” and “all of the methods needed to practice the invention were well known.” 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that “it would not require undue experimentation to obtain antibodies needed to practice the claimed invention.” Id., 8 USPQ2d at 1407.

        It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. 858 F.2d at 737, 740, 8 USPQ2d at 1404, 1407.

        A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).

        The determination that “undue experimentation” would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. These factual considerations are discussed more fully in MPEP § 2164.08 (scope or breadth of the claims), § 2164.05(a) (nature of the invention and state of the prior art), § 2164.05(b) (level of one of ordinary skill), § 2164.03 (level of predictability in the art and amount of direction provided by the inventor), § 2164.02 (the existence of working examples) and § 2164.06 (quantity of experimentation needed to make or use the invention based on the content of the disclosure).

        1. 12.3.1.1

          >This sounds expensive to litigate…

          Worse, it’s something you’ll need to litigate. How do you advise a client about their likelihood of success under that test??

          WTF Fed. Cir. This test has “I want to reason backward from a desired conclusion” written all it.

          1. 12.3.1.1.1

            First, let’s understand that quoting from the MPEP and actually reading and applying case law are OFTEN two different things.

            ==–==–==

            WTF Fed. Cir. This test has “I want to reason backward from a desired conclusion” written all it.

            OC – I have to disagree – this “test” is more like a snapshot of required reasoning – facts on hand will be dispositive, and one cannot waive those away with some type of “reason backward from a desired conclusion.”

          2. 12.3.1.1.2

            “This test has “I want to reason backward from a desired conclusion” written all it.”

            That’s how we wound up with Chore Time and other cases essentially saying that skill level can be implicitly determined by working backwards from the prior art references at issue.

    4. 12.4

      “we get no training on how to address wands factors”

      That’s not quite true as there’s at least one class that covers Enablement in the Patent Training Academy. Admittedly, there is not much follow-on training after that.

      But this doesn’t strike me as a problem because so few cases even call for careful consideration of enablement.

      Do we need more training on Utility? No, we barely ever make those rejections. We just need a rough understanding that allows us to 1) recognize a potential utility problem, 2) find and follow the utility guidelines when there is a potential problem. The same applies to enablement.

      And if the issue comes up more than rarely in your particular art, your TC should be giving targeted training on the matter.

    5. 12.5

      Yo Ed, ask the examiners in TC 3600 for the OACS enablement rejection form paragraph that is inserted into OACS. I wrote one for the first form paragraphs for 112 going through the Wands factors with a fill in the blank type form. Everybody was using it back in the day, so ask around for it. I could send you my copy but it is dated.

  9. 11

    The real issue is how does all this relate to Alice?

    I am always get enablement rejections and not the Ariad-Style Written Description ones. I think I have had only of the Ariad-Style Written Descriptions rejections.

    I think 90 percent of 112 rejections are the examiner just wanting the applicant to put on the record some interpretation as to why the claim amendments are supported so the examiner does not have to put it on the record.

    1. 11.1

      Think about it. What in the world is the relationship between 112 and Alice? Alice is supposed to be about an “abstract idea”. Shouldn’t that fail 112?

      An “abstract idea” by definition is not enabled.

      1. 11.1.1

        Re: “An “abstract idea” by definition is not enabled.”
        ? Isn’t it possible to have an Alice-type “abstract idea” claim that is so broad that it only functionally claims the desired result, even thought the specification does contain an actual [but unclaimed] enablement of an invention?

        1. 11.1.1.1

          “ “An “abstract idea” by definition is not enabled.”

          This is nonsense. “A method comprising adding two numbers” is an ineligible abstraction but it’s enabled for a five year old.

          Fyi, Wiper has tr 0lled everyone here before with this silliness many times. But he’s a very serious person and totally not a reactionary dinosaur foaming at the mouth.

          1. 11.1.1.1.1

            You know MM it would be nice if just once you dealt in the world of reality.

            The English definition of “abstract idea” would mean that the claim is not enabled. For example, “disassociated from any specific instance.” That would mean that the claim is not enabled. As the specification then would have ZERO embodiments of the claims.

            Can you find a definition in the OED where the claim would be enabled?

            1. 11.1.1.1.1.1

              “ The English definition of “abstract idea” would mean that the claim is not enabled. For example, “disassociated from any specific instance.” That would mean that the claim is not enabled.”

              Early onset dementia is tough to watch.

        2. 11.1.1.2

          Paul, it is possible under the Scotus caselaw. But why?

          How does Alice fit in with 112? If a claim can pass 112 and fail the “abstract idea” test, then what is this new definition of “abstract idea” that the Scotus has conjured up? We know it is not the definition from the OED and can’t possible be made to fit into one of the meanings.

          That means it is a completely new made-up term from the Scotus that used the words “abstract idea” to represent their new idea. But they never defined it and it is a new term of art.

      2. 11.1.2

        The Court refused to define “Abstract.”

        That was not an accident.

    2. 11.2

      “I think 90 percent of 112 rejections are the examiner just wanting the applicant to put on the record some interpretation as to why the claim amendments are supported so the examiner does not have to put it on the record.”

      Yes, that. And it’s of course easy to so support (assuming of course that you aren’t trying to turn what should be a CIP into a CON — which absolutely none of us have ever seen . . . or tried to do 🙂

  10. 10

    I would like to see the requirements rationalized somewhat.

    Type 2 (Ariad-style) is unreasonably strict. If the structure of any encompassed embodiment cannot be envisioned by PHOSITA, the claim is not supported by Type 2 written description. I think that Type 2 written description should be put through a filter like the “without undue experimentation” standard in Type 3 (enablement) written description.

    In biotechnology, there are many inventions that can be made without undue experimentation and without ever needing to know the structure of the embodiments. These inventions are treated too harshly under Type 2 written description.

    1. 10.1

      Dhdhgggdhdhg

      and without ever needing to know the structure

      What??? Per Malcolm, the only valid claim is an exacting ‘physical structure’ picture claim. What you are describing just sounds (smells?) Abstract.

    2. 10.2

      Bob “ In biotechnology, there are many COMPOSITIONS that can be made without undue experimentation and without ever needing to know the structure of the embodiments.”

      I fixed your error. If you don’t know the art-distinguishing structure of your alleged “invention”, you lack a fixed and permanent idea of what it is you are hoping to claim. In other words, you haven’t conceived of any” invention”.

      The position you are taking was obliterated by the CAFC years ago, for good reasons.

    3. 10.3

      In biotechnology, there are many inventions that can be made without undue experimentation and without ever needing to know the structure of the embodiments.

      I remember back in college, I had occasion to sit in on a panel interviewing a faculty candidate. The candidate asked if there was a problem with grade inflation at the school, and one of the other students on the panel promptly and ingenuously replied “I don’t think so. I am getting all A’s.” The rest of us on the interview panel all chuckled, because what my student colleague considered an example of not a problem was a candid illustration of the very problem about which the candidate was concerned.

      Your quoted remark in 10 reminds me of that incident. The fact that it is possible in our art field to make something without undue experimentation and without knowing its structure is precisely why the Ariad rule has to be so strict. Otherwise, you will have a bunch of paper claims that do nothing to advance the art, but which stand as an obstacle to commercialization by those who actually do advance the art.

  11. 9

    The “best-mode” requirement is unreasonable. There is no clear criteria on determining the “best-mode.” In a lot of senarios, inventors themselves do not know which embodiment is “best”.

    1. 9.1

      I agree. A lot of the time the product isn’t 100 percent done so it is still a work in progress.

    2. 9.2

      Yes, the story of the “best mode” requirement still in 112 is a sad legal saga. For many years the case law basically only found a best mode violation when litigation discovery found a deliberate witholding from the specification of a then known clearly better mode. That was rarely a problem. Then some clever attorneys with some miss-representations of prior holdings misled Fed. Cir. panels into much broader and much more vague decisions that spawned much more patent litigation time on that subject. That in turn led the NSF to urge its elimination, and that in turn let to the bizarre APA statutory treatment of leaving it in 112 but making it completely non-assertable in litigation. I doubt if the PTO has ever enforced “best mode” against any applicants, even though it theoretically could, much less ever engaged in that kind of discovery.

  12. 8

    I think there is a lot of confusion among examiners between the enablement requirement and an Ariad-style written description requirement (or any other written description requirement beyond the ban on new matter). However, I am not sure that the confusion results in a lack of attention being paid to one of the two types of issues, but it does result in a misidentification of the issue. Perhaps, except in the case of new matter, the Office should have a practice of rejecting claims under both – the enablement requirement and the written description requirement – in the alternative, so that the correct basis of rejection is identified. That may also help ensure that neither of the issues is overlooked during examination.

    Of course, as a first step to ensure that the Examiner examines the claims for the enablement requirement and the written description requirement, the Office should ensure that each examiner feels like they have the time to read the specification and reads it. I suspect that the Office could make improvements in that area.

    Regarding the examiner’s ability to compare two documents, so as to check for new matter, I would hope that Examiners have access to that feature in Word and have access to the applications in a format that is compatible with that feature in Word. If they do not, that would seem like an easy thing to fix. Nonetheless, it can some times still be difficult to assess whether a set of insertions is new matter. However, most standards have gray areas.

    1. 8.1

      I think there is a lot of confusion among examiners between the enablement requirement and an Ariad-style written description requirement…

      +1

    2. 8.2

      It’s not just Word that has that feature, but our firm has two distinct other forms of software.

      Somehow though, this seems to baffle 6 down below.

      1. 8.2.1

        “Somehow though, this seems to baffle 6 down below.”

        Anon the chucklefck thinks that the WD issues that I face in real life involve situations were it’s just a matter of word matchinglol, matchin up da two documentslol. Um no anon, they draft the claims differently than they draft the main body of the spec, on purpose. This is why MM was making reference to the “opaque filth”. You’re obviously living on easy street if that’s all you ever see. Out in real life, we see some people, not all, who are drafting such that you can’t just play an ez game of match em up with words or document to document. You have to see if the words in the spec will provide support for the different words used in the claims, or the more broad/less broad/differently broad wording/phrasing in the spec will provide reasonable support for what they decided to try to claim 3+ years later (usually).

        1. 8.2.1.1

          Hey not less, not off, can you read what I actually posted and notice the context here?

          This is about “slipping something in” in the spec— of course you have to do a deeper dive on the claims — that’s your job (unless you are trying to backslide into that ‘not bother to read the spec and only search based on claim keywords thing that you used to swear by).

          If that is the case you deserve even more derision.

    3. 8.3

      You should always point to support in the original disclosure for any claim elements added in amendments (as recommended by MPEP) or else you get an automatic rejection. Examiners check original claims for support in the specification/drawings but expect you to point to support for amendments.

  13. 7

    Dennis, contrary to the above assumption, unless “new matter” is added by express amendments, rather than by buried insertion into so-called-continuations, CIPs and divisionals, it is highly UN-likely to be dug out and exposed by examiners, who do not have the time to read and compare every line of the spec against every line of the parent spec [like good patent litigators get well paid to do, and have the software tools to do it].

    1. 7.1

      ?

      Somehow a comparison of two documents is deemed difficult?

      1. 7.1.1

        “Somehow a comparison of two documents is deemed difficult?”

        It can be actually difficult, but moreso the issue is that if you actually bother to do it, it can very easily take hours and hours and hours. And as a reminder, we’re already under resourced by half. I have one case on my docket that comes esp to mind, it is not a simple case, and checking the CON’s claims for WD back to the parent is going to be a literal time wasting nightmare. Worst is when you spend hours and hours checking for WD and the claims in question do in fact turn out to have valid WD, so the whole exercise amounts to “basically having done nothing useful” for hours, which nobody will ever appreciate, and nothing will ever come of. In a perfect world, that would be the norm (no WD issues ever found thanks to good drafting), just hours and hours wasted reviewing for WD, never noticed by anyone. For which you get no “additional credit/time” etc. (this notably is the exact situation that leads to the phenomena of “burn out”). Fortunately enough WD problems exist and are noted that at least someone notices your work occasionally.

        See a great talk on what burnout actually is and when it actually arises:

        link to youtube.com

        Spoiler, WD review, as a thing, is a burnout generating nightmare. If you choose not to do it, you get massively rewarded (saved time, less having to work VOT) unless a QAS finds the issue after you (small slap on wrist). If you do WD review in depth, then if there is no issue, then nobody ever notices your efforts (and you get to work extra VOT yay). Only in the somewhat rare instances of massive WD problems are your efforts even rewarded by someone noticing your efforts irl, and the claims ultimately being amended. And this dynamic gets super charged the longer and more complex claims become (the time sink becomes larger, the resentment for having done work that goes unacknowledged and unrewarded grows larger, burnout thus is generated, and the benes for skipping it, or half-assing it grow ever larger).

        1. 7.1.1.1

          Last time I checked the PTO has the authority to force applicants to specify exactly (line numbers) where support for any new claim may be found. If the support is not clear (and it shouldn’t take long to determine that), that’s the applicant’s problem, not the Examiner’s problem.

          Make the applicant do the work and move on to your next project while the applicant wallows in the opaque filth of their worthless specification.

          1. 7.1.1.1.1

            Your animosity laden feelings are noted, Malcolm.

          2. 7.1.1.1.2

            “Last time I checked the PTO has the authority to force applicants to specify exactly (line numbers) where support for any new claim may be found. If the support is not clear (and it shouldn’t take long to determine that), that’s the applicant’s problem, not the Examiner’s problem.”

            Maybe, but we’re definitely not allowed to use that authority “on the ground”. Applicants (read: attorneys) would scream bloody murder if that was being used every other application or even rarely. It would be costing them HUGE $$$ to pay attorneys to do that outside the PTO. That amount would only be higher to have it go through the lengthy internal/external review chain many of these corps have setup for foreign patent apps.

            “Make the applicant do the work and move on to your next project while the applicant wallows in the opaque filth of their worthless specification.”

            If only.

            1. 7.1.1.1.2.1

              It is our standard practice to include reference support location for all amendments.

              There are plurality of reasons to do this; and it is simply not difficult.

            2. 7.1.1.1.2.2

              Yep, 6, there’s the difference, between your Office and the European one. Here in Europe, the Rules command the Applicant to provide “chapter and verse” for where in the application as filed there is adequate WD support for the prosecution amendment. Without that chapter and verse, the amendments don’t even make it into the wrapper. With them, the Examiner will deign to have a look. Can you imagine how much time that saves?

              Consider X and Y, two competing corporations who file on much the same invention at much the same date. For today’s world, this is very often the case. X files earlier than Y, but Y’s disclosure is more detailed, and includes a WD of the embodiment of the common concept that works best.

              With 18 month A-publication now the norm, it often happens that Applicant X will see in later Applicant Y’s just-published A-publication the invention that X should have disclosed and claimed in its own application, but didn’t. The PTO has to police prosecution amendment by X very carefully. If it doesn’t, X will inject into its application words that are effective to appropriate (by which I mean “misappropriate”) the invention it came across in Y’s A-publication.

              First to File means that the rights should go to the party who really was first to file, on whatever crown jewel we are focussed on. Often, that will be Y. You, the Office, must be on permanent alert to stop X amending their pending application to leverage its earlier filing date to capture that crown jewel that wasn’t in their application as filed and thereby snatch out of the hands of its competitor Y the title of “First to File” on the subject matter of blockbuster commercial interest. The tables are turned, and instead of first inventor Y being able to enforce its patent against infringer X, the objectionable amendment allows X to assert its patent against Y, the true and first inventor, as infringer.

              All very far-fetched and theoretical, I hear you say, dismissively. Believe me, it isn’t. Watch, for example, what happens under First to File with the CRISPR-cas-9 priority contest.

              1. 7.1.1.1.2.2.1

                [I]n Europe, the Rules command the Applicant to provide “chapter and verse” for where in the application as filed there is adequate WD support for the prosecution amendment.

                Sure, but 6 was not talking about prosecution amendments (“checking the CON’s claims for WD back to the parent is going to be a literal time wasting nightmare,” emphases added). I am sure that it is a “best practice” in Europe (as it is here) to specify written description support in the parent for your CON claims, but it is not an actual requirement, is it?

              2. 7.1.1.1.2.2.2

                “Can you imagine how much time that saves?”

                For sure.

                “Sure, but 6 was not talking about prosecution amendments (“checking the CON’s claims for WD back to the parent is going to be a literal time wasting nightmare,” emphases added)”

                I mean greg bro, it’s both amendments and CONs. The WD analysis is literally the same regardless of whether they put it in an amendment or whether they abandoned the old app and filed a CON with slightly changed claims. You know this. I was just discussing that CON I mentioned I have on my docket.

        2. 7.1.1.2

          You are doing it WAY wrong, 6.

          I have to do this all the time on matters we bring in. It is NOT difficult at all.

          1. 7.1.1.2.1

            “You are doing it WAY wrong, 6.”

            Ok big hoss, tell me the simple(r) way senpai.

            1. 7.1.1.2.1.1

              Try goggling it

              Not less, not off.

              1. 7.1.1.2.1.1.1

                Try googling how to make sophisticated complex factual findings easily? Bro, you’re tarded.

                But yes, in most cases it isn’t that hard. I’m obviously discussing the difficult ones.

                1. 6,

                  You quoted me at 7.1.1 and now want to insert something else?

                  And then you immediately walk back your own views and want to distinguish that you were only talking about “the really tough ones”…?

                  Do you realize how LAME that is?

                2. “And then you immediately walk back your own views and want to distinguish that you were only talking about “the really tough ones”…?”

                  That’s all I ever was talking about du mfck, jebus, how are you this tarded? Obviously there is a good 1/2 or so of cases that don’t really need all that much review for WD as it is apparent immediately. I never said “hur dur every case takes forever to find WD support for the claims hur dur”.

                3. Like I said then: You are doing it WAY wrong, 6.

                  And if it is nothing but whining about the de minimus “hard cases,” then you are STILL doing it way wrong.

                4. “but whining about the de minimus “hard cases,” ”

                  If it’s one or two, possibly three cases per year, but it takes as long as an entire count is supposed to in order to JUST verify WD support, then yes, it’s generating a good bit of VOT for that biweek(s) dmbfck. Even three instances per year have just generated a full month and a half’s worth of having had bi-weeks were significant VOT had be done.
                  Especially at 1/2 funding as is. Throw that on top of the rest of things in examination generating that effect and like I said, it’s a burnout generating nightmare. You can choose to de minimiz this if you like, and act a chucklefck like you are, if you like, but that isn’t going to change the irl effect this has.

                5. Ever hear the adage, “the guy deception that proves the rule”…?

                  Thanks for proving my point – you whining bureaucrat.

                  (and in case you did not notice, the aim is NOT to make the bureaucrat’s job easier per se — heed Einstein’s words on simplicity.

        3. 7.1.1.3

          6,
          Long ago I was told by an experienced mentor, “Other, many times doing a good job is like urinating in your pants when you’re wearing a dark suit. You get a warm feeling, but nobody else even notices what you’ve done”.

          1. 7.1.1.3.1

            “You get a warm feeling, but nobody else even notices what you’ve done”.”

            The only “warm feeling” you get eventually is rage.

            1. 7.1.1.3.1.1

              For you 6, maybe both.

    2. 7.2

      Examines do have access to automated document comparison.

      Also, what I believe you’re referencing (including a claim to matter not supported by a parent application in a child application) is usually not new matter if the claim is an original claim of the child application.

      Of course it does raise priority issues that Examiners will frequently overlook.

      1. 7.2.1

        Oh, so prosecution amendments can give rise to “priority issues”. Who would have thought. Surprise, surprise.

        And Examiners frequently overlook those issues. Well, well. What a surprise. Thanks for that insider observation, Ben.

        1. 7.2.1.1

          Something crawl up an orifice today, Max?

          1. 7.2.1.1.1

            No, Ben. Well, at least as far as I know, nothing has.

            I said Thanks because it explains why the US law firms that instruct me get so irritated by how tenacious EPO Examiners are over prosecution amendments.

            1. 7.2.1.1.1.1

              Maybe next time stat with: I understand that US law is different, but here in our Sovereign, the Sovereign has chosen thusly:

              If you are seeing “irritation,” chances are good (very good, seeing how you STILL have not learned lessons here in the States for what – at least a dozen years now) that YOU are part of that irritation in that you are not managing expectations of your US clients.

      2. 7.2.2

        Ben, yes, automated document text comparison software is now widely available, but I seriously doubt if many examiners often use it, when they have so few hours to do other things the PTO cares a lot more about? And yes, the reason I put “new matter” in quotes is that, as you note, it is really a different 112 enablement or written description issue for the parent provisional or regular priority-claimed application’s lack of support for continuation or divisional application claims, which can often be fatal to those claims from intervening-date prior art, if detected. From what I have seen this is far more common, and far less often detected, by examiners, than new matter added by amendments, and that was my point.

      3. 7.2.3

        “Also, what I believe you’re referencing (including a claim to matter not supported by a parent application in a child application) is usually not new matter if the claim is an original claim of the child application.”

        Obviously wrong. If you claim something in a child (even as an “loloriginal claim” of the child) that would not have support in the parent in a CON (as opposed to a CIP) then it is actually a 112 issue. It isn’t just a reason to push back the filing date to that of the child. Common misconception.

        1. 7.2.3.1

          Not wanting to go into the weeds, I did omit how one should ideally require applicant to change a CON or a DIV to a C-I-P (MPEP 211.05 and FP2.10.01)

          But an improper relationship identifier isn’t a basis for a 112(a).

          If you still disagree, please explain a bit.more in depth. I am open to the possibility of me being incorrect.

          1. 7.2.3.1.1

            “But an improper relationship identifier isn’t a basis for a 112(a).”

            Of course not, but the claims lacking WD support as of the claimed priority date most certainly is.

            As the exact FP you just cited says:
            “A continuation or divisional application cannot include new matter.”

            The way you absolutely stop them from getting their patent app is not that form paragraph, but to send a 112 itself. See, literally the form paragraph under which your cited FP is to be uesd. aka “2.10”. That is, you’re only supposed to use 2.10.01 under the FP 2.10, though for whatever reason the drafters of the MPEP didn’t mention that. Tis easier to just send the 112 and note that they can make it a CIP if they want to keep the claim, else they can amend it. Same thing as those FPs. But, at least I understand now why there are brainlets running around not understanding how to handle this situation.

            The drafters probably meant for “Form paragraph 2.10.01 should be used where applicant is claiming the benefit of a prior nonprovisional application under 35 U.S.C. 120, 121, or 365(c) and the relationship (continuation or divisional) of the applications should be changed to continuation-in-part because the disclosure of the later-filed application contains matter not disclosed in the prior-filed nonprovisional application.” < that to mean for people that you're supposed to append FP 2.10.01 to FP 2.10, but they weren't clear. Obviously that FP 2.10.01 has no teeth by itself, you've got to back it up with a 112.

            1. 7.2.3.1.1.1

              I think get what you’re saying now.

              I never meant to suggest that 2.10.1 gets sent out by itself. Of course it follows 2.10.

              But I think you’re wrong about sending out a rejection for this. If applicant amends their specification to include new matter, you send out an objection (FP7.28) not a rejection, right? I believe an improper CON is effectively an objection issue than a rejection issue.

              But the MPEP doesn’t explicitly address the matter, so we’ll probably have to leave the dispute there until someone appeals/petitions one of your priority-based 112s or someone appeals/petitions a case where I’m objecting to an improper CON.

              1. 7.2.3.1.1.1.1

                I am pleased to see my comment 7 on new matter additions to continuations and divisionals has stirred up an even bigger PTO MPEP and practice issue needing addressing than I had realized. Thanks for the comments.

  14. 6

    Oh, so USPTO Examiners are tending to focus on No. 1, are they. Then life is about to get more challenging, for prosecutors because of the “squeeze” that those Examiners can put you under. Once Examiners get practised in this squeeze routine, it gives them a satisfying sense of power over hitherto pushy prosecutors. Pay-back time, some of them might think, in any adversarial environment.

    At least in the EPO, it goes like this: your claim as originally filed is (oh dear) too wide. It attracts objection. It needs to be narrowed. Trouble is, any attempt to narrow down without losing commercial value attracts one or both of a definiteness and a No. 1 WD objection. Finding a way to make progress can be a real challenge.

    Or do I see it, from my vantage point in Europe, wrong?

    1. 6.1

      You are most likely (forgetting…???) to take into account the usual US practice of providing a spectrum of positions, such that intermediate choices are fully countenanced.

      This would not be the first time that you continue to wear those spectacles of your EPO Uber Alles pandering.

      It certainly will not be the last.

      Sadly.

      1. 6.1.1

        Funny, that remark of yours, anon, given the way drafting is taught, here in Europe. Think of it as the “onion layer” method. Between the outer envelope of claim 1 and the “best mode” described with drawings, one recites as many intermediate levels of generality as the case admits. Not only that though. For each level you need a different level of technical effect. That’s what I regard as “fully countenanced” drafting. It’s not what I see in US-style drafting.

        As you say,anon, it won’t be the last time I read these threads, and add to them, wearing my EPO goggles. It does seem to attract intelligent reaction though, which is of course what I crave most.

    2. 6.2

      From what I’ve seen of European file wrappers, “written description” is a much tougher standard over there.

      Here, if you start with a claim to ABC, and the specification demonstrates possession of D, there is almost never a problem with claiming ABCD even if the specification never mentions ABCD.

      I’m not familiar with how you guys articulate your WD, but it seems close to requiring initial recognition of ABCD from the start. That seems a little too strict, even to a seething anti-patentist such as me.

      1. 6.2.1

        “ That seems a little too strict”

        It definitely affects the drafting but it makes total sense when you consider the fact that the application is going to end up in different countries with different languages. If you’ve got an actual invention and a product to market and not just some “logic on a computer” silliness readymade for the Texas csspool, then the burden on the applicant to carefully and clearly describe what is being claimed as an invention is completely justifiable.

        Reminder that if eligibility should ultimately (and unfortunately) be shrunk and the people who complain about it are now are forced to address 112 and 103 in an adult manner, those same people will bitterly complain about how confusing and unfair those statutes are. Because that’s all they ever do and it’s all they have ever done.

      2. 6.2.2

        Ben, as you say, the standard for “new matter WD” is presently much higher under the EPC than it is under the AIA.

        Why might that be? I suggest that a First to File law ratchets up progressively the “new matter WD” degree of strictness. The process takes about 30 years.

        Why that then? Because whenever there is a priority contest between two corporate applicants who filed on much the same invention at much the same time, both parties amended during prosecution to improve their respective positions, and both have a plausible argument that they were the one to file first, the court’s task is to find out which of the two specifications as originally filed was the earlier to include WD of the exact subject matter of the claim in dispute. Forty years of such case law leaves the “new matter WD” test extremely strict. For everybody, not just the two corps that were in dispute, back then.

        But hey, what do I know about priority contests under a First to File regime?

        1. 6.2.2.1

          “I suggest that a First to File law ratchets up progressively the “new matter WD” degree of strictness.”

          I’m not seeing the mechanism by which this necessarily happens. Either a strict standard or a loose standard could resolve your hypothetical.

          1. 6.2.2.1.1

            Not seeing? Not to worry, Ben. It took 30 years or so for Europe to ratchet up the strictness of its “new matter WD” enquiry.

            It comes from the cumulative effect of priority contests between rival corporations who made much the same invention at much the same time and filed at much the same date. A current example might be the CRISPR-cas-9 priority contest. The efforts of the courts to bestow rights in hundreds of horribly detailed claims always reliably on the earlier of the two filers for that very very specific subject matter of any one such claim means that the degree of microscopic scrutiny of the respective WD ratchets ever upward.

            Does that help?

            1. 6.2.2.1.1.1

              I see how that is one possible path out, but I just don’t see why the courts would find the looser standard unacceptable.

              This seems analogous to asserting that “obviousness” must have a crystal clear standard after 70 years of litigation between highly motivated parties. That’s not exactly the case in the US, is it?

              So not really, but thanks for trying.

              1. 6.2.2.1.1.1.1

                Ben, I will try again. With FtF there are no interferences. Instead, there is a battle over which party filed first. The ONLY evidence is that of the disclosure content of the respective applications as filed. Now, think how much effort goes into interference proceedings. Would you describe that as “loose”? Do you suppose that the opposed parties dispute priority under FtF loosely? Or is it more like a “no holds barred” contest, the very opposite of “loose”?

      3. 6.2.3

        [EP] WD… seems close to requiring initial recognition of ABCD from the start. That seems a little too strict…

        “Too” strict how? What is the deleterious consequence of the EP WD standard?

        1. 6.2.3.1

          Some inventors who thought they invented ABC will provide a disclosure that focuses on ABC and only mention its applicability to D in passing, and they will not receive a patent because they were wrong about what the invention actually was, despite them definitely being aware of ABCD.

          Yes, a marginal effect.
          Yes, it could be mitigated by spending more on drafting.

          All the same, I think it’s a reasonable place to take the option that favors inventors. This is just a small step beyond “you don’t need to disclose what one of ordinary skill in the art already knows” to “you don’t have to spell out the combinations that one of ordinary skill in the art would infer.”

          1. 6.2.3.1.1

            “ “you don’t have to spell out the combinations that one of ordinary skill in the art would infer.”

            Yes, there is no point in reciting all of the obvious combinations that go beyond the actual invention. So where is this “too strict” problem arising again?

            Let’s just recognize the elephant in the room again which is that computers can process any kind of data that you tell them to process so that “combining” “specific” logic elements is both obvious and ineligible and that’s been the case for years. Permitting logic applicants to do an end around basic written description requirements is just another feeble attempt to keep the merry go round spinning for the lowest form of innovation.

            1. 6.2.3.1.1.1

              Translation: Wah.

              As always, feel free to abstain from any innovation that you would choose to not permit innovation protection to.

    3. 6.3

      Different laws by different sovereigns.

      Only an arse confuses the two and delights in it.

  15. 5

    Dennis, I like your approach of dividing up Section 112(a) into three different original specification [including original claims] disclosure requirements: written description-new matter; enablement; and best mode, and further dividing written description into two categories: new matter and Ariad-style insufficiency as describing and only functionally claiming the unpatentable problem rather than providing a patentable solution. *
    But, do you not need another category? Of an insufficient number of specification examples to support a broad generic claim, particularly in the “unpredictable arts”?
    *Distinctions similarly needed to avoid confusion between the 3 very different Sup. Ct. created “unpatentable subject matter” exceptions to 101: “laws of nature, physical phenomena, and abstract ideas.”

  16. 4

    I’d really love to see more Ariad type issues involving software decided at the CAFC. When I was looking at 3600 PTAB WD decisions the other day, it seemed like there were two camps among panelists… one with a much lower standard for possession than the other.

    1. 4.1

      I wonder which of the “two camps” subscribes to a more stringent eligibility standard. Put another way, does the camp with the “lower standard” for possession simply have “lower standards” for everything, or is there some thought behind their position?

  17. 3

    Agree with this in general. Certainly “best mode” seems like a dead letter post-AIA, for the reasons you provide.

  18. 2

    prima facie rejection is still an ‘internal research project’ that can largely be accomplished with a quick scan of the document and CTRL-F.

    False.

    The US does not have an ipsis verbis requirement and ANY assertion based merely on this “quick scan and CTRL-F” does not establish a prima facie case.

    C’mon man – you TEACH this stuff and should know better.

  19. 1

    Everything above looks right to me.

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