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I have an Invention ... Now What?
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   Re: CIP applications
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Isaac
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Re: CIP applications
« Reply #20 on: Jul 12th, 2006, 12:28pm »
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on Jul 12th, 2006, 11:45am, JimIvey wrote:

Ah, yes, of course.  Here it is:
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 specifical 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.

 
The question is what is the invention.   If the claim says that the invention is X without a Y, then it follows that if X without Y is not described to the level required by the statute, then by the literal words of the statute, the claim is not properly supported.    IMO the problem is not that the CAFC's result offends the wording of the statute, but rather that the prior case history has suggested that the statute is not to be taken so literally.
 
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Yes, anticipation.  Enablement?  As you noted, different issues entirely.

 
My comment was addressed to your observation that genus and species do not appear in your office actions.   Genus and Species were terms introduced only to pose the conundrum in the hypothetical.   I'm not sure the terms are otherwise of any importance to the discussion.
 
I have agreed that I don't see the type of enablement issues we discuss here showing up as 35 USC 112 rejections in Office actions.
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Isaac
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Re: CIP applications
« Reply #21 on: Jul 12th, 2006, 1:08pm »
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on Jul 12th, 2006, 12:28pm, Isaac wrote:
The question is what is the invention.   If the claim says that the invention is X without a Y, then it follows that if X without Y is not described to the level required by the statute, then by the literal words of the statute, the claim is not properly supported.

Okay, now I think we're getting somewhere.  If X without Y is inoperative and the specification doesn't describe Y, then, yes, there's no enablement.  
 
However, what I'm seeing here is different.  If I describe X with Y and successfully enable that combination, then I claim X and I'm silent as to the existence of Y (Y being just one embodiment), there is enablement under strict construction of the first paragraph of Section 112.  The only thing that should prevent me from claiming X independently of Y under the current statute is prior art.  If I'm the first to ever enable a new and non-obvious X, then I should be able to claim it independent of any embodiment I describe.  To rule otherwise is to deny meaningful patent protection to all pioneering inventions.
 
But this is all getting into what the law ought to be.  I see this as just one more way in which courts are free to ignore the applicable statutes when they decide it would be fair to do so.  I suppose the thing to do is describe at least 2 embodiments for each and every element of a claim to avoid a Section 112 rejection under par. 1.  Seems odd to me.  
 
Regards.
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Isaac
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Re: CIP applications
« Reply #22 on: Jul 12th, 2006, 1:59pm »
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on Jul 12th, 2006, 1:08pm, JimIvey wrote:

Okay, now I think we're getting somewhere.  If X without Y is inoperative and the specification doesn't describe Y, then, yes, there's no enablement.

 
I think this law stretches a little further than you suggest here.    
 
If the specification does not describe how to make X without Y, and one skilled in the arts could not make an X without Y without undue experimentation, then even if someone later manages to make X without Y, there is no enablement.
 
« Last Edit: Jul 12th, 2006, 2:00pm by Isaac » IP Logged

Isaac
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Re: CIP applications
« Reply #23 on: Jul 12th, 2006, 4:30pm »
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I see.  So, if I describe a computer process that involves sorting and only describe a bubble sort, I can't claim merely a "sorting" step because I've only enabled a bubble sort embodiment.  But, if I also describe that a shell sort can be used, I'm okay with Section 112.
 
Or, if I invent an audio amplifier before the invention of the transistor but I don't specifically claim vacuum tubes and yet my describes the use of vaccum tubes, my claims must be limited to vacuum tubes or be invalid?  Does it matter than a known plug-in repalcement, the transistor, is just around the corner?  Does it matter than anyone could have easily made and used my amplifier from my description?  Does it matter that, once the transistor was invented, that the manner of making my amplifier with transisters was straightforward?
 
In reality, the list of seemingly inconsequential details that are prerequisites for an invention can be very long indeed.  For example, all computer-implemented inventions require digital logic, and probably specific elements currently inherent in all commercially available microprocessors.  Examples include ALUs, registers, DMA controllers, device I/O ports, etc.  Arguably, those are all "essential".  Does that mean that each and every computer-implemented method claim not reciting those elements is invalid under Section 112, first paragraph?  Suppose the spec doesn't enable use of the method in a processor without an ALU.  Is failure to recite an ALU in the claim failure to comply with Section 112, first paragraph?  Arguably, it is.  Yet, the result is absurd.
 
I suppose it all comes down to what's "essential".  Required for operation can't be the definition because of the absurd results it would cause as I've described above.  What makes an element "essential?"
 
For what it's worth, this area is exactly where I lost the most points on the patent bar -- omitting elements in a claim unrelated to the invention (as I saw it) but stuff they wanted to see anyway -- inherent elements of a sparkplug.  Again, "just too broad" without any statutory justification for it.  I guess the PTO knew from the beginning that I'd be a trouble-maker.  Wink
 
Regards.
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Re: CIP applications
« Reply #24 on: Jul 12th, 2006, 6:55pm »
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on Jul 12th, 2006, 4:30pm, JimIvey wrote:
So, if I describe a computer process that involves sorting and only describe a bubble sort, I can't claim merely a "sorting" step because I've only enabled a bubble sort embodiment.  But, if I also describe that a shell sort can be used, I'm okay with Section 112.

No, it’s not that simple.  A good primer on this topic can be found in the MPEP at 2164.03.  Here are a few bits from that section that might be of help…
 
“The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839.”
 
“The scope of the required enablement varies inversely with the degree of predictability involved, but even in unpredictable arts, a disclosure of every operable species is not required. A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements. In re Vickers, 141 F.2d 522, 526-27, 61 USPQ 122, 127 (CCPA 1944); In re Cook, 439 F.2d 730, 734, 169 USPQ 298, 301 (CCPA 1971). However, in applications directed to inventions in arts where the results are unpredictable, the disclosure of a single species usually does not provide an adequate basis to support generic claims. In re Soll, 97 F.2d 623, 624”
 
on Jul 12th, 2006, 4:30pm, JimIvey wrote:
Or, if I invent an audio amplifier before the invention of the transistor but I don't specifically claim vacuum tubes and yet my describes the use of vaccum tubes, my claims must be limited to vacuum tubes or be invalid?  Does it matter than a known plug-in repalcement, the transistor, is just around the corner?  Does it matter than anyone could have easily made and used my amplifier from my description?  Does it matter that, once the transistor was invented, that the manner of making my amplifier with transisters was straightforward?

I think we are getting outside the “scope” of our original topic.  Nonetheless, a situation similar to what you describe was considered in the case of In re Hogan (Sorry, but I don’t have the cite handy.)    As I recall, the court held in that case that application need only be enabled at the time of filing, and that developments that occur subsequent to filing could not be relied upon to demonstrate that the claims were not enabled.  So in your example, if the application was filed before transistors had been invented, a court would not find the claim unduly broad for failing to limit the scope to exclude the use of what had yet to be invented.
 
 
 
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