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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 #25 on: Jul 13th, 2006, 5:40am »
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on Jul 12th, 2006, 6:55pm, Anon wrote:
“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”

 
It can be argued that the CAFC's recent decisions depart from the principle that in the predictable arts such as electronics, a single species generally provides adequate basis to support generic claims.
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Isaac
Isaac
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Re: CIP applications
« Reply #26 on: Jul 13th, 2006, 7:10am »
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on Jul 12th, 2006, 4:30pm, JimIvey wrote:
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.

 
A closer analogy would be if you described a computer process that required a sorting step to work properly, but then drafted a claim that did not include a sort of any kind.
 
I think your comment that the enablement analysis we discuss depends on what's considered essential really gets to the heart of the matter.   Generally, we don't expect that a claim must describe an operating machine.    
 
For example in claiming a book shelf, one might have a claim reciting the support at one end of the shelf without bothering to recite the support at the opposite end even if there is no known way to support the shelf with the single support.   I don't think many people would see any problem with such a claim.
 
If somebody comes up with a way to support a shelf from only one end using an anti-gravity device, should that cause us to rethink whether the original claim was too broad?   Even if we think it would be fair not to include the anti-gravity implementation within the scope of the claim, is accomplishing that by invalidating the original claim appropriate?
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Isaac
Anon
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Re: CIP applications
« Reply #27 on: Jul 13th, 2006, 3:32pm »
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on Jul 13th, 2006, 5:40am, Isaac wrote:
It can be argued that the CAFC's recent decisions depart from the principle that in the predictable arts such as electronics, a single species generally provides adequate basis to support generic claims.

 
You'll get no argument from me on that.  I only included the bit citing In re Vickers to appease Mr. Ivey.  
 
My intended focus was on the bit citing In re Soll and stating that "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," which I think is still good law for that proposition.
 
Although a little out of date, the MPEP at 2164.08 (Enablement Commensurate in Scope With the Claims) provides another good primer for those interested in this topic.
 
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Anon
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Re: CIP applications
« Reply #28 on: Jul 13th, 2006, 4:09pm »
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on Jul 13th, 2006, 7:10am, Isaac wrote:
If somebody comes up with a way to support a shelf from only one end using an anti-gravity device, should that cause us to rethink whether the original claim was too broad?   Even if we think it would be fair not to include the anti-gravity implementation within the scope of the claim, is accomplishing that by invalidating the original claim appropriate?

 
I don't know of any cases where it has been successfully relied upon, but the "reverse doctrine of equivalents" would be once means for a court to exclude certain otherwise infringing subject matter from the scope of a claim.
 
As for invalidating the original claims based on subsequent developments in technology,  the MPEP once again offers a good primer:
 
"In general, the examiner should not use post-filing date references to demonstrate that the patent is non-enabling. Exceptions to this rule could occur if a later-dated reference provides evidence of what one skilled in the art would have known on or before the effective filing date of the patent application. In re Hogan, 559 F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977)" 2164.05(a) (Specification Must Be Enabling as of the Filing Date)."  MPEP at 2164.05(a)
 
Issues this sort were raised in Chiron Corp. v. Genentech Inc., 363 F.3d 1247.  In that case, Chiron asserted that Genentech's "humanized antibodies" infringed Chiron's generic claims to certain antibodies.  The generic antibody claims had priority back to a date before "humanized antibodies" had been invented.  So the questions were: (1) should Chiron's claims be construed to encompass humanized antibodies, which had not be invented at the time of filing?  And if so (2) were Chiron's claims enabled at the time of filing.
 
In answer to the first quesion, the court found infringment.  With regard to the second question, the court found that the claims were not enabled.  HOWEVER, the reason for a finding lack of enablement had nothing to do with the fact that the claims encompassed a later invention.  Rather, the court found that, when construed as a suggesed by Chiron, the claims read on technology that was available at the time of the invention (chimeric antibodies), but was not enabled for such technology.  But for what its worth, the Fed Circuit confused many issues in the opinion, so it is a little tough to follow.
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Stedham Ronger
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Re: CIP applications
« Reply #29 on: Jul 16th, 2006, 1:33am »
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on Jul 13th, 2006, 3:32pm, Anon wrote:

 
You'll get no argument from me on that.  I only included the bit citing In re Vickers to appease Mr. Ivey.  
 
My intended focus was on the bit citing In re Soll and stating that "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," which I think is still good law for that proposition.
 
Although a little out of date, the MPEP at 2164.08 (Enablement Commensurate in Scope With the Claims) provides another good primer for those interested in this topic.
 

 
 
From your posts I do not think Anon knows what he is talking about.
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