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:
- 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.”)
- 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).
- Enablement: The original specification must enable a person of skill in the art to make and use the invention without undue experimentation.
- 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.