Inherent Disclosure is Sufficient to Support a Priority Claim

In Yeda Research v. Abbott GmbH. [2015-1662] (September 20, 2016), the Federal Circuit affirmed the district court’s decision that U.S. Patent No. 5,344,915 was entitled to priority of its parent application, and thus was not invalid.

The issue before the Federal Circuit was the legal standard for written description support. The Federal Circuit said that in order for the claims of the patent to benefit from the parent application’s filing date, the claimed invention must be disclosed by the parent application in a way that clearly allows a person of ordinary skill to recognize that the inventor invented what is claimed and possessed the claimed subject matter at the date of filing.  The Federal Circuit turned to the doctrine of inherent disclosure: Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the
invention’s inherent properties.

It was undisputed that the later-claimed protein with the same partial N-terminus sequence and additional traits disclosed in the parent application.  The Federal Circuit concluded that the application inherently discloses the remaining amino acids in the N-terminus sequence of TBP-II and serves as adequate written description support for the patent claiming TBP-II. The Federal Circuit said that it is not necessary for an application to disclose a protein’s complete N-terminus sequence in order to provide an adequate written description.


Backgrounds — The Less Said the Better

Prosecutors are repeatedly being told by the Federal Circuit, and we are gradually learning, that the less said on the Background the better.  Whether it is by admitted prior art, criticisms of the prior art that work a disclaimer, or objects of the invention that limit the scope of the claims, backgrounds can do more harm than good.  Usually the less said the better.

The Background of U.S. Patent No. 8,007,204 is one that might be improved by brevity, although its problem — irony — is not as fatal as those listed above.  The ‘204 Patent is directed to a Floating Structure for Support of Mixed Use Facilities.  One of the problems of the prior art identified in the background are the restrictions of intellectual property laws:


The solution is a floating structure in the middle of the ocean, protected, of course, by patent issued by a land-based society.



And That’s Final . . .

The MPEP specifies when a rejection can be made final:



A second Office Action on the merits should be final, except where the examiner introduces a new ground of rejection that was not necessitated by either amendment or an information disclosure statement.  This is in accord with the philosophy espoused by the Federal Circuit in In re De Blauwe, 736 F.2d 699, 706 n.9, 222 USPQ 191, 197 n.9 (Fed. Cir. 1984), where the court stated that when the Office advances “a position or rationale new to the proceedings, an applicant must be afforded an opportunity to respond to that position or rationale by submission of contradicting evidence.”

If You Can’t Say Something Nice . . .

In Bamberg v. Dalvey, [2015-1548] (March 9, 2016), the Federal Circuit affirmed the PTAB’s decision in an appeal from a consolidated interference proceeding refusing to allow the claims of four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. § 112.  The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. The transfer paper generally contains: (1) a removable substrate coated with silicon, (2) a hot-melt adhesive, (3) a white layer, and (4) an ink-receptive layer.  During the interference proceeding, Dalvey alleged that Bamberg’s claims were unpatentable for lack of written description, because the claims recite a white layer that melts at a wide range of temperatures, while Bamberg’s specification discloses a white layer that does not melt at ironing temperatures (i.e., below 220°C).

The Federal Circuit agreed that the contested claims are properly construed to encompass a white layer that melts above and below 220°C, and thus Bamberg’s specification must also support a white layer that melts above and below 220°C to satisfy the written description requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that Bamberg’s specification fails to meet the written description requirement.  Bamberg’s specification stated that the white layer “comprises or is composed of permanently elastic plastics which are non-fusible at ironing temperatures (i.e. up to about 220°C) and which are filled with white pigments—also non-fusible (up to about 220°C),” and that the “elastic plastics must not melt at ironing temperatures in order not to provide with the adhesive layer . . . an undesired mixture with impaired (adhesive and covering) properties.”  The Federal Circuit found that Bamberg did not possess a white layer that melts below 220°C because it specifically distinguished white layers that melt below 220°C as producing an “undesired” result.  This criticism effectively limited the scope of the disclosure.

In patents, as in life, Mom was right:  If you can’t say something nice about the prior art, don’t say anything at all.  Otherwise, your criticism may be treated as a disclaimer of claim scope.

The Privileged Few

In Queens’s University at Kingston, [2015-145] (March 7, 2016) the Federal Circuit granted a writ of mandamus directing the district court to withdraw its order compelling the production of Queen’s University’s communications with its non-attorney patent agents.  The Federal Circuit said:

To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be kept privileged.

Whether communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment — to hold otherwise would frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.


No Need to Accentuate the Positive — Eliminate the Negative

In Inphi Corporation v, Netlist, Inc., [2015-1179] (November 13, 3015), the Federal Circuit affirmed the BPAI decision affirming the examiner’s final decision declining to reject claims amended during inter partes reexamination to add a negative limitation. At issue in this appeal is a negative claim limitation Netlist introduced by amendment, limiting the
claimed chip selects to exclude three particular types of signals (CAS, RAS, and bank-address signals):

wherein the system memory domain is compatible with a first number of chip selects, and the physical memory domain is compatible with a second number of chip selects equal to twice the first number of chip selects, wherein the plurality of memory devices comprises double-data rate (DDR) dynamic random-access memory (DRAM) devices and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals.

The Federal Circuit said that “[n]egative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351.  The Federal Circuit characterized the issue as  whether the specification of the ’537 patent provides a “reason to exclude” CAS, RAS, or bank address signals that is sufficient to satisfy the written description requirement.  The Federal Circuit quoted from Santarus that:

Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.

The Federal Circuit said that the “reason” required by Santarus is provided, for instance,
by properly describing alternative features of the patented invention.

The parties agreed that the disclosure in the ’537 patent distinguishes among the relevant
signal types, but disagreed about whether that distinction creates a “reason to exclude” that satisfies the requirements of § 112, paragraph 1, and the Federal Circuit held that the disclosure as an alternative was a sufficient reason to exclude.

As long as the disclosure makes a distinction, you don’t have to accentuate the positive, or eliminate the negative, the disclosure will support a negative limitation.


Avoid Saying Anything About the Prior Art Except How it Differs from the Claims

In Inline Plastics Corp. v. EasyPak, LLC, [2014-1305] August 27, 2015, the Federal Circuit vacated the district court’s claim construction of “frangible section” as being improperly limited to the preferred embodiment, and therefore reversed the district court’s judgment of non-infringement.

The preferred embodiment of the “frangible section” is described as having a pair of parallel score lines, although an alternative embodiment is described as having a single score line.  EasyPak argued that the prosecution history supports construing frangible section as requiring at least two score lines, but the Federal Circuit disagreed,  noting that the examiner did not require such limitation, and it was not a condition of patentability.

in distinguishing a prior art reference, the applicant described the prior art as having a single score line, but the Federal Circuit observed that this was not the basis for distinction.  The Federal Circuit further found that claim differentiation also supported the broader construction of frangible section, because the alternative embodiment specifically mentioned a single score line.

Although all’s well that ends well, the patent applicant’s description of the prior art formed the basis for the iinfringer’s claim construction arguments.  When characterizing and distinguishing prior art, it is probably best not to mention any aspect of the prior art that is not necessary to the basis for distinguishing the prior art.