In re Lew, 2007 WL 4201279 (Nov. 29, 2007)
Facts: The appellant submitted a patent application to the USPTO (Patent Application No. 10/658,143) containing 18 claims for the appellant’s invention. The invention was described as a wheel hub with clutch intended for bikes to permit free wheeling when no torque is applied to the connected wheel.
Procedural History: The patent examiner rejected all 18 of the appellant’s claims on the basis of “double patenting.†The examiner found that all of the claims were the same as the claimed invention of the appellant in an earlier issued patent, 6,544,452. In response to the examiner’s rejection, the appellant proceeded to cancel all of the 18 claims and adding a new 19th claim that submitted a substitute specification. The specification was nearly identical to the prior claims except for the substitution of “curved members†in place of the term “ball bearings†and the replacement of the reference term “pockets†for the term “slots.†Upon review of the amended application, the examiner rejected the new claim on the basis that the substitution resulted in the addition of new material in the application unsupported in the description and issued a final rejection. The Board of Patent Appeals and Interferences affirmed the examiner’s final rejection and held that there was no indication in the disclosure that the term “ball bearing†could be replaced with “curved members†and therefore, failed to reasonably convey to convey to an artisan that the appellant had possession of a broader concept. The appellant appealed that Board’s holding to the Federal Circuit for review.
Holding: The Federal Circuit affirmed the conclusion of the Board of Appeals and held that the appellant’s amendments was not supported by the initial disclosure and it was issue a final rejection based upon the failure to comply with the written description set forth in 35 U.S.C. § 112.
In its opinion, the Court runs through the requirements for the amendment of an application. The Court states that amendments made to an application must find support in the original specification and that this requirement has normally been policed under the written description requirement contained in the applicant’s specification. The written description requirement is concerned with determining if the applicant had possession of the invention at the time of filing of the application. The court reiterates that the test of determining possession under the written description requirement is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later failed application as of the filing date of the earlier filed application.
The court rejected the appellant’s argument for entitlement to the broader “curved members†concept based upon the inherent curved nature of ball bearings finding no support for such an assertion within the court’s case law. The court felt that permitted the appellant use of the broader concept without any support that the concept was inherently contained in the original specification would entitle the appellant to a broader scope of the invention unsupported by the specification. Without any support that the language in the written description permitted such a broad interpretation, the Court affirmed the determination of the Board of Appeals.
Importance: The importance of this case lies in the reaffirmation of what the standard for satisfying the written description requirement. The Court’s language is clear about what is necessary to find that the amendments made during prosecution are supported by the patent’s specification. This case also represents the typical situation where the written description is insufficient.
Critical Analysis: The language of the opinion is in line with the prior case law on this subject. This adherence is necessary and critical in helping patent applicants understand what is necessary for patentability of their invention.
Facts: The appellant submitted a patent application to the USPTO (Patent Application No. 10/658,143) containing 18 claims for the appellant’s invention. The invention was described as a wheel hub with clutch intended for bikes to permit free wheeling when no torque is applied to the connected wheel.
Procedural History: The patent examiner rejected all 18 of the appellant’s claims on the basis of “double patenting.†The examiner found that all of the claims were the same as the claimed invention of the appellant in an earlier issued patent, 6,544,452. In response to the examiner’s rejection, the appellant proceeded to cancel all of the 18 claims and adding a new 19th claim that submitted a substitute specification. The specification was nearly identical to the prior claims except for the substitution of “curved members†in place of the term “ball bearings†and the replacement of the reference term “pockets†for the term “slots.†Upon review of the amended application, the examiner rejected the new claim on the basis that the substitution resulted in the addition of new material in the application unsupported in the description and issued a final rejection. The Board of Patent Appeals and Interferences affirmed the examiner’s final rejection and held that there was no indication in the disclosure that the term “ball bearing†could be replaced with “curved members†and therefore, failed to reasonably convey to convey to an artisan that the appellant had possession of a broader concept. The appellant appealed that Board’s holding to the Federal Circuit for review.
Holding: The Federal Circuit affirmed the conclusion of the Board of Appeals and held that the appellant’s amendments was not supported by the initial disclosure and it was issue a final rejection based upon the failure to comply with the written description set forth in 35 U.S.C. § 112.
In its opinion, the Court runs through the requirements for the amendment of an application. The Court states that amendments made to an application must find support in the original specification and that this requirement has normally been policed under the written description requirement contained in the applicant’s specification. The written description requirement is concerned with determining if the applicant had possession of the invention at the time of filing of the application. The court reiterates that the test of determining possession under the written description requirement is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later failed application as of the filing date of the earlier filed application.
The court rejected the appellant’s argument for entitlement to the broader “curved members†concept based upon the inherent curved nature of ball bearings finding no support for such an assertion within the court’s case law. The court felt that permitted the appellant use of the broader concept without any support that the concept was inherently contained in the original specification would entitle the appellant to a broader scope of the invention unsupported by the specification. Without any support that the language in the written description permitted such a broad interpretation, the Court affirmed the determination of the Board of Appeals.
Importance: The importance of this case lies in the reaffirmation of what the standard for satisfying the written description requirement. The Court’s language is clear about what is necessary to find that the amendments made during prosecution are supported by the patent’s specification. This case also represents the typical situation where the written description is insufficient.
Critical Analysis: The language of the opinion is in line with the prior case law on this subject. This adherence is necessary and critical in helping patent applicants understand what is necessary for patentability of their invention.