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   Re: CIP applications
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   Author  Topic: Re: CIP applications  (Read 3534 times)
JimIvey
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Re: CIP applications
« Reply #10 on: Jul 11th, 2006, 4:44pm »
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on Jul 11th, 2006, 4:08pm, Isaac wrote:
I think the hypothetical is certainly possible.   There is a whole line of CAFC cases including the recent Lizardtech v. Earth Resources Mapping which we've discussed here before that suggest that a disclosure can fail to support a broad claim by describing only a single embodiment or describing a single way of implementing a given feature.

I thought there was a case directly on point that came down within the last 6-18 mos. that said more or less the opposite.  The losing argument of the defendant was that they didn't enable our embodiment therefore we don't infringe or the claim's invalid.  The holding was that enabling one embodiment, any embodiment, was all that's required to enable a claim.  Sorry, don't remember the exact case off the top of my head.
 
Now, I've heard of specifics of a described embodiment being imported into the claim, but that's a matter of claim interpretation, not sufficiency of enablement.
 
I think the only way that the hypothetical could be possible would be in the best mode requirement.  If the specific species has a different best mode than the broad genus and the former best mode was included but the latter best mode omitted, then I suppose it's possible for the broad genus to fail S.112 par. 1 while the narrower species would pass muster.
 
Perhaps I'm dense, but I don't see how one could enable -- as an example -- an orange without also enabling citrus or even generally spherically shaped fruit.  The law is quite clear that you don't have to enable each and every possible embodiment of a claimed invention, just one.
 
Regards.
 
P.S.  Should have done this before posting, but I just looked up and skimmed the case.  I think it's an unfortunate decision.  The law as I now understand it is that enablement of just one embodiment is sufficient, unless it's not.  Great.
 
The odd circumstance here was that a narrower claim had the same limitation that the court wanted to import into the claim, so the doctrine of claim differentiation impeded that.  In effect, it didn't matter which of two alternatives the court chose: ignore the doctrine of claim differentiation and allow claims 1 and 21 to be identical and valid, or disallow importation of the limitation into claim 21 and invalidate claim 21, allowing the otherwise identical claim 1 stand.  The effective result would have been the same either way.
« Last Edit: Jul 11th, 2006, 4:57pm by JimIvey » IP Logged

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James D. Ivey
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Anon
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Re: CIP applications
« Reply #11 on: Jul 11th, 2006, 5:58pm »
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on Jul 11th, 2006, 4:44pm, JimIvey wrote:
I don't see how one could enable -- as an example -- an orange without also enabling citrus or even generally spherically shaped fruit.  The law is quite clear that you don't have to enable each and every possible embodiment of a claimed invention, just one.

I don't even know where to begin with this.  You are quite right that you don't have to "enable each and every possible embodiment of a claimed invention."  And in fact, one embodiment might be sufficient to enable a genus in some cases.  But to imply that a single embodiment enables any claim to a genus encompassing the species is just silly.  What then would be the point of the "scope of enablement" rejection?
 
on Jul 11th, 2006, 4:08pm, Isaac wrote:
I think it ought to be possible to overcome at least a 102 rejection by arguing the original description was not enabling.  

A species anticipates a genus.  So if the earlier disclosed species was enabled, it would anticipate the later claimed genus.  And it happens all the time.
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Isaac
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Re: CIP applications
« Reply #12 on: Jul 11th, 2006, 6:30pm »
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on Jul 11th, 2006, 5:58pm, Anon wrote:
A species anticipates a genus.  So if the earlier disclosed species was enabled, it would anticipate the later claimed genus.  And it happens all the time.

 
That generally true statement is simply not correct all of the time.   A species having an element that is determined to be a required element does not anticipate a genus that does not include the required element.   That's essentially the situation when a genus is not enabled by a complete enabling description of a species.  
 
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Isaac
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Re: CIP applications
« Reply #13 on: Jul 11th, 2006, 6:44pm »
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on Jul 11th, 2006, 4:44pm, JimIvey wrote:

I thought there was a case directly on point that came down within the last 6-18 mos. that said more or less the opposite.  The losing argument of the defendant was that they didn't enable our embodiment therefore we don't infringe or the claim's invalid.

 
I don't think that's quite the same proposition.   The result in Lizardtech was that the claim in question was infringed but was invalid.   The losing argument you describe seems to be  an attempt limit the scope of a claim.  
 
Quote:
P.S.  Should have done this before posting, but I just looked up and skimmed the case.  I think it's an unfortunate decision.  The law as I now understand it is that enablement of just one embodiment is sufficient, unless it's not.  Great.

 
The case is not an isolated one.  I left my notes at work, but there are a number of prior CAFC cases over the last few years having a similar result.
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Isaac
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Re: CIP applications
« Reply #14 on: Jul 11th, 2006, 7:14pm »
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on Jul 11th, 2006, 6:30pm, Isaac wrote:
A species having an element that is determined to be a required element does not anticipate a genus that does not include the required element.   That's essentially the situation when a genus is not enabled by a complete enabling description of a species.

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?  
 
Or to ask another way, would one practicing such a species infringe an earlier granted claim to the genus?
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