{"id":1982,"date":"2018-03-14T10:47:15","date_gmt":"2018-03-14T14:47:15","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1982"},"modified":"2018-03-25T11:22:35","modified_gmt":"2018-03-25T15:22:35","slug":"written-description-is-met-by-what-the-disclosure-reasonably-conveys-to-those-skilled-in-the-art","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1982","title":{"rendered":"Written Description is Met by What the Disclosure Reasonably Conveys to Those Skilled in the Art"},"content":{"rendered":"

In Hologic, Inc. v. Smith & Nephew, Inc.<\/a>, [2017-1389] (March 14, 2018), the Federal Circuit affirmed the Board’s determination that\u00a0S&N\u2019s earlier-filed PCT application has sufficient\u00a0written description to make it a priority document instead\u00a0of an invalidating obviousness reference to U.S. Patent No. 8,061,359.<\/p>\n

The claim in disputed is directed to an endoscope “having a light guide
\npermanently affixed therein.”\u00a0 The PCT application from which the patent derived described a “fibre optics bundle.”\u00a0 The Examiner found it did not, and rejected the claims as obvious over the prior PCT application.\u00a0 However, the Board reversed,\u00a0finding that the disclosure in the\u00a0PCT provides sufficient written description\u00a0support for the claimed \u201clight guide,\u201d entitling the\u00a0patent to the priority date of the PCT.<\/p>\n

The Federal Circuit said that to be entitled to the priority date of the earlier-filed PCT, S&N must show that the PCT discloses\u00a0what the patent claims, according to the written\u00a0description requirement of 35 U.S.C. \u00a7112.\u00a0\u00a0Specifically,\u00a0based on an objective inquiry into the four corners of the\u00a0specification from the perspective of a person of ordinary\u00a0skill in the art, the specification must describe an\u00a0invention understandable to that skilled artisan and show\u00a0that the inventor actually invented the invention
\nclaimed.\u00a0 The Federal Circuit found that it did.<\/p>\n

The Federal Circuit noted that substantial evidence showed that\u00a0the PCT
\ndiscloses a \u201clight guide,\u201d including the fact that the parties did not dispute that a\u00a0\u201cfibre optic bundle\u201d is a type of light guide, and that various types of light guides were well-known\u00a0in the art.\u00a0 The Federal Circuit also rejected the argument that a light guide was not shown in the Figures, pointing out that “written description\u00a0does not require that every claimed element be illustrated\u00a0in the figures, particularly in predictable arts and where\u00a0the element not depicted is conventional and not \u201cnecessary\u00a0for the understanding of the subject matter sought to\u00a0be patented.\u201d<\/p>\n

The Federal Circuit was satisfied that the Board\u00a0applied the correct law and that substantial evidence\u00a0supports the Board\u2019s finding that the PCT provides\u00a0sufficient written description disclosure of the claimed
\n\u201cfirst channel having a light guide permanently affixed\u00a0therein.\u201d<\/p>\n

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

In Hologic, Inc. v. Smith & Nephew, Inc., [2017-1389] (March 14, 2018), the Federal Circuit affirmed the Board’s determination that\u00a0S&N\u2019s earlier-filed PCT application has sufficient\u00a0written description to make it a priority document instead\u00a0of an invalidating obviousness reference to U.S. Patent … 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":[30,31],"tags":[],"class_list":["post-1982","post","type-post","status-publish","format-standard","hentry","category-reexamination","category-written-description"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1982","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=1982"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1982\/revisions"}],"predecessor-version":[{"id":1983,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1982\/revisions\/1983"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1982"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1982"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1982"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}