{"id":1992,"date":"2018-03-01T12:32:06","date_gmt":"2018-03-01T17:32:06","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1992"},"modified":"2018-03-25T13:04:43","modified_gmt":"2018-03-25T17:04:43","slug":"written-description-must-do-more-than-make-claimed-subject-matter-obvious","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1992","title":{"rendered":"Written Description Must Do More Than Make Claimed Subject Matter Obvious"},"content":{"rendered":"

In Knowles Electronics, LLC v. Cirrus Logic, Inc.<\/a>, [2016-2010] (March 1, 2018), the Federal Circuit affirmed the PTAB affirmance of the Examiner that\u00a0claims 1\u22124 of U.S. Patent No. 6,781,231 were anticipated, and that new claims\u00a023\u221227 for lack of an adequate written description.<\/p>\n

Knowles argued that the term \u201cpackage\u201d should be construed to
\nmean an assembly that \u201crequires a second-level connection
\nwith a mounting mechanism.\u201d\u00a0 However, as the Federal Circuit noted, neither the claims nor the specification specify the type of connection required.\u00a0\u00a0Because intrinsic evidence is not definitive, the Federal Circuit turned to\u00a0extrinsic evidence, and found support in the definitions that the PTAB selected.\u00a0 Although Knowles complained that the Board impermissibly selected the broadest\u00a0definition, but the Federal Circuit rejected this, finding the Board\u00a0reviewed all extrinsic evidence, including evidence\u00a0proffered by Knowles.<\/p>\n

Regarding the support for the new claims, the Federal Circuit said that the written\u00a0description must clearly allow a PHOSITA to recognize\u00a0that the inventor invented what is claimed.\u00a0 A\u00a0description which renders obvious a
\nclaimed invention is not sufficient to satisfy the written\u00a0description requirement of that invention.\u00a0 The amended claims require solder pads\u00a0\u201cconfigured\u00a0to mechanically attach and electrically connect the package\u00a0to a surface of an external printed circuit board using\u00a0a solder reflow process,\u201d however the specification merely discloses a genus\u2015solder\u00a0pads that are capable of being connected to a board, and\u00a0fails completely to disclose the newly\u00a0claimed species of such pads\u2015pads that are connectable to\u00a0a board specifically by using a reflow process.<\/p>\n

The Federal Circuit rejected the Knowles argument that the PTAB disregarded \u201cthe state of\u00a0the art at the time of filing\u201d and \u201cprior art knowledge\u201d\u00a0that would have demonstrated that a PHOSITA knew
\nsolder pads were \u201cintended to be capable of reflow attachment
\nto a user\u2019s board.\u201d\u00a0\u00a0Given uncertainties in the art, and at best a passing
\nreference to solder pads in the specification, the PTAB\u00a0reasonably found that a PHOSITA would not have recognized\u00a0that the inventor possessed solder pads \u201cconfigured\u00a0to\u201d connect to a printed circuit board through a reflow\u00a0process.\u00a0 The Federal Circuit further noted that\u00a0the consideration
\nfor adequate written description asks what the\u00a0applicant conveyed with reasonable clarity, and the \u2019231\u00a0patent \u201cfailed to even mention, much less spell out any\u00a0detail of, the claimed reflow process\u201d).<\/p>\n

Judge Newman dissented because the claim construction adopted by the PTAB, and affirmed by the Federal Circuit was at odds with the construction of the same claims in a prior Federal Circuit case, which she believed should be binding.<\/p>\n

 <\/p>\n

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

In Knowles Electronics, LLC v. Cirrus Logic, Inc., [2016-2010] (March 1, 2018), the Federal Circuit affirmed the PTAB affirmance of the Examiner that\u00a0claims 1\u22124 of U.S. Patent No. 6,781,231 were anticipated, and that new claims\u00a023\u221227 for lack of an adequate … 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":[49],"tags":[],"class_list":["post-1992","post","type-post","status-publish","format-standard","hentry","category-collateral-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1992","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=1992"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1992\/revisions"}],"predecessor-version":[{"id":1993,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1992\/revisions\/1993"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1992"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1992"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1992"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}