{"id":1636,"date":"2017-06-27T12:04:07","date_gmt":"2017-06-27T16:04:07","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1636"},"modified":"2017-07-09T12:42:38","modified_gmt":"2017-07-09T16:42:38","slug":"written-description-must-support-claims-not-exclude-alternatives","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1636","title":{"rendered":"Written Description Must Support Claims; Not Exclude Alternatives"},"content":{"rendered":"

In The Board of Trustees of the Leland Stanford Junior University v. The Chinese University of Hong Kong<\/a>, [2015-2011] (June 27, 2017), the Federal Circuit vacated the PTAB’s determination in an interference that Stanford’s claims were unpatentable for lack of written description, because the Board relied on improper evidence to support its key
\nfindings and did not cite to other substantial evidence to\u00a0support its findings.<\/p>\n

Whether a patent claim satisfies the written description\u00a0requirement of 35 U.S.C. \u00a7 112, paragraph 1, depends\u00a0on whether the description clearly allows persons of\u00a0ordinary skill in the art to recognize that the inventor
\ninvented what is claimed. \u00a0Substantial evidence supports a finding that the specification\u00a0satisfies the written description requirement\u00a0when the essence of the original disclosure conveys the\u00a0necessary information\u2014regardless of how it conveys\u00a0such information, and even when the disclosure\u2019s words are open to different interpretations.<\/p>\n

The Board determined that Stanford’s patent does not disclose the random\u00a0massively parallel sequencing of nucleic acid\u00a0sequences claimed in the later-added claims such that a\u00a0person of skill in the art would have concluded that the\u00a0Quake inventors were in possession of the method
\nclaimed. \u00a0The Board concluded from the language of the specification that the specification referred to targeted, rather than the claimed random sequencing. \u00a0The specification specifically mentioned an Illumina sequencer, but in evaluating the specification, the Board relied upon information about a Roche sequencer. \u00a0Further the Board’s finding that the language did not exclude targeted sequencing ignores the fact the description might support both random and targeted sequencing.<\/p>\n

The Federal Circuit said that the Board\u2019s\u00a0task was to determine whether the specification’s\u00a0description discloses random sequencing, as recited
\nby the later-added claims, not whether the description\u00a0does not preclude targeted MPS sequencing. The Federal Circuit said that the Board\u2019s
\nerror on this issue is compounded by its failure to explain\u00a0the meaning of key sentences and phrases in the specification\u2019s\u00a0discussion of the sequencing process, and its\u00a0failure to compare these statements to the claim limitations.<\/p>\n

For these reasons the Federal Circuit vacated the interference decisions and remanded for the Board to reconsider whether\u00a0Quake\u2019s relevant patents and applications satisfy the\u00a0written description requirement. \u00a0The Federal Circuit specifically instructed the Board to\u00a0examine whether a person\u00a0of ordinary skill in the art would have known, as of\u00a0the priority date, that the specification\u2019s reference to\u00a0Illumina products meant random sequencing as\u00a0recited in the claims, by examining the record evidence as
\nto pre-filing date art-related facts on Illumina products. \u00a0The Federal Circuit said that the Board\u00a0may include an analysis of whether\u00a0the record contains testimony or evidence, relevant to this\u00a0written description analysis, showing that any post-filing\u00a0date publications contain art-related facts on random sequencing or Illumina products existing on the\u00a0filing date.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In The Board of Trustees of the Leland Stanford Junior University v. The Chinese University of Hong Kong, [2015-2011] (June 27, 2017), the Federal Circuit vacated the PTAB’s determination in an interference that Stanford’s claims were unpatentable for lack of … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[31],"tags":[],"class_list":["post-1636","post","type-post","status-publish","format-standard","hentry","category-written-description"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1636","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1636"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1636\/revisions"}],"predecessor-version":[{"id":1637,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1636\/revisions\/1637"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1636"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1636"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1636"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}