The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Dec 3rd, 2020, 8:59am

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
I have an Invention ... Now What?
(Moderators: Forum Admin, JimIvey, JSonnabend)
   Re: CIP applications
« Previous topic | Next topic »
Pages: 1 2 3 4 5 6 7  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: Re: CIP applications  (Read 3581 times)
Isaac
Senior Member
****




   


Posts: 3472
Re: CIP applications
« Reply #15 on: Jul 11th, 2006, 7:33pm »
Quote Quote Modify Modify

on Jul 11th, 2006, 7:14pm, Anon wrote:

I don't follow.
 
In your example, does the species that has "a required element" fall within the "genus that does not include the required element" that you mention?  

 
Of course it wouldn't.   But is there a reason to define the genus in that way?  That surely isn't the way we would have defined it if the proper support had been in the original application.
 
If we resolve the question by suggesting that what we thought to be a species turned out not to be, we can maintain the rule that a species anticipates a genus, but we are still left with conundrum of whether the description of the faux species in the original application anticipates the broad claim in the CIP.   The element that we are saying is essential may not have been explicitly stated to be essential in the original application.
 
Suppose that the original application never had the genus claim and the lack of enablement determination had never been made.  What is the likelihood that an examiner would agree that the original application did not enable the broad claim.
 
 
By the way, you are too modest.  I think you follow perfectly well.
 
IP Logged

Isaac
Anon
Guest
Re: CIP applications
« Reply #16 on: Jul 11th, 2006, 8:07pm »
Quote Quote Modify Modify Remove Remove

I think maybe we are getting a little too far out there for the home viewers to follow.  
 
So just to be clear, no general statement, including this one, is true 100% of the time.  Nonetheless, I hope we can agree that the following statement is true far more often than not:
 
When a later claimed genus encompasses a species that had been taught in the prior art by way of an enabling disclosure, the enabled prior art species anticipates the later claimed genus.
 
 
on Jul 11th, 2006, 7:33pm, Isaac wrote:
Suppose that the original application never had the genus claim and the lack of enablement determination had never been made.  What is the likelihood that an examiner would agree that the original application did not enable the broad claim.

Back in the day when I examined biotech applications,  I often found examples where  claims weren't supported in a priority document.  Sometime it mattered and sometimes it didn't.  How many such examples did I miss?  Probably more than I caught.   Wink
IP Logged
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: CIP applications
« Reply #17 on: Jul 12th, 2006, 10:21am »
Quote Quote Modify Modify

on Jul 11th, 2006, 5:58pm, Anon wrote:
What then would be the point of the "scope of enablement" rejection?

A good question.  What is the point?  A better question would be what's the statutory basis for such a rejection?
 
In 15 years of practice, I've never seen one of those rejections.  Either I'm doing something right, or the nature of software/e-commerce applications keeps them out of that issue.  I rarely see restriction requirements and it's quite rare for me to even see the words "genus" and "species" in my Office Actions.  It makes me wonder if this is one of those odd rules germain mainly to life sciences and chemical arts.  A friend of mine says she gets restriction requirements listing more inventions than there are claims.  I find that incredibly odd.
 
Generally speaking, broader claims have fewer limitations and therefore require less support in the spec (ignoring best mode for the moment).  More narrow claims have more limitations and require more support in the spec.  The conventional check on breadth of claims is prior art, not support in the spec.  At least that's how the statute appears to be constructed.  But patent law always seems to include the qualifier "unless we think it ought to be otherwise given the totality of the case."
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Isaac
Senior Member
****




   


Posts: 3472
Re: CIP applications
« Reply #18 on: Jul 12th, 2006, 10:43am »
Quote Quote Modify Modify

on Jul 12th, 2006, 10:21am, JimIvey wrote:

A good question.  What is the point?  A better question would be what's the statutory basis for such a rejection?

 
The statutory basis of course would be 35 USC 112 1st paragraph.
 
Quote:
In 15 years of practice, I've never seen one of those rejections.  Either I'm doing something right, or the nature of software/e-commerce applications keeps them out of that issue.

 
I've never seen one either (over a much shorter period of practice).  I never made one as an examiner.
 
Quote:
 I rarely see restriction requirements and it's quite rare for me to even see the words "genus" and "species" in my Office Actions.  It makes me wonder if this is one of those odd rules germain mainly to life sciences and chemical arts.

 
Whether the terms are used or not, any time you get a 102 rejection based on a description of an invention that does not include only the elements you've claimed, the rejection is of a genus based on a species found in the prior art.   The principle of anticipation of a genus by a species is fundamental and would not be worthy of mention absent a challenge of that fundamental principle by the applicant.
IP Logged

Isaac
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: CIP applications
« Reply #19 on: Jul 12th, 2006, 11:45am »
Quote Quote Modify Modify

on Jul 12th, 2006, 10:43am, Isaac wrote:
The statutory basis of course would be 35 USC 112 1st paragraph.

Ah, yes, of course.  Here it is:
Quote:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Hmmm, I don't see where I'm required to describe more than a single, simple embodiment of whatever's claimed; I just see "making and using [the invention]".  From what I can see, enablement of a single, simple embodiment is enough to enable a very broad claim -- enablement of making and using one infringing article.  I don't see anything like, "if the invention is broadly claimed, the specification shall describe more than a single, simple embodiment of the invention in such full, clear, concise, and exact terms."
 
So, I'm guessing the statutory basis for going beyond this language of Section 112, first paragraph, is some extrapolation by the Federal Circuit or its predecessors.  
 
on Jul 12th, 2006, 10:43am, Isaac wrote:
Whether the terms are used or not, any time you get a 102 rejection based on a description of an invention that does not include only the elements you've claimed, the rejection is of a genus based on a species found in the prior art.   The principle of anticipation of a genus by a species is fundamental and would not be worthy of mention absent a challenge of that fundamental principle by the applicant.

Yes, anticipation.  Enablement?  As you noted, different issues entirely.
 
Ah, I may have just had an epiphany.  I get many "just too broad" rejections.  "My supersvisor will never allow this."  Maybe rejections of this type are based on very broad claims and a specification that's thinner than the examiner would like and the examiner can't find any anticipatory or obviating prior art (I know, that's not how "obviating" ought to be used, but it seemed to fit nicely).  My specifications typically enable several embodiments, not just one -- typically, as many as I can think of and describe within budget.  So, perhaps "just too broad" can't rely on Section 112 for my applications.  Thus, I get the "just too broad" rejection (never in writing, by the way) without the benefit of a statutory basis (in writing, usually a 103 argument that's pretty clearly a big stretch).
 
Regards.
« Last Edit: Jul 17th, 2006, 12:35pm by JimIvey » IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Pages: 1 2 3 4 5 6 7  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board