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(Message started by: copatents on Jul 10th, 2006, 6:54pm)

Title: Re: CIP applications
Post by copatents on Jul 10th, 2006, 6:54pm
Let me rephrase can the parent published application be used in either a 102 or 103 rejections vs. the claims of the CIP?

The claims of the CIP incorporate both new subject matter and the "old" subject matter.  


Title: Re: CIP applications
Post by Anon on Jul 11th, 2006, 1:40am
I'm not really sure whether I understand your question, but...

Priority is determined on a claim-by-claim basis.    

So it may be that claim 1 has priority to the parent while claim 2 does not.  In such a case, the parent could NOT be prior cited as prior art against the claim 1.  But depending on dates and other considerations, the parent could potentially be cited as prior art against claim 2.

Does that help?


Title: Re: CIP applications
Post by Bill Richards on Jul 11th, 2006, 4:27am
I do not believe the parent, if the CIP is filed while the parent is pending, is ever p/a, even if published, which is not in the hypo.  Other intervening published art may be, but not the parent.

Title: Re: CIP applications
Post by Isaac on Jul 11th, 2006, 5:38am

on 07/11/06 at 04:27:37, Bill Richards wrote:
I do not believe the parent, if the CIP is filed while the parent is pending, is ever p/a, even if published, which is not in the hypo.  Other intervening published art may be, but not the parent.


I believe that if the parent has been published for 1 year before the CIP is filed, for claims not eligible for the priority of the parent, the published parent application is available under 102(b) and under 103(a).

What provision do you believe excludes the published application from being prior art?


Title: Re: CIP applications
Post by Bill Richards on Jul 11th, 2006, 6:26am
I agree for claims entirely not eligible for priority of the parent and after one year.  I just don't recall ever having seen a  rejection of CIP claims based upon applicant's published parent.  What's the result if a portion of the CIP claim is supported?  For example, parent supports and claims A+B.  CIP supports C and claims A+B+C?

Title: Re: CIP applications
Post by Anon on Jul 11th, 2006, 10:26am

on 07/11/06 at 06:26:40, Bill Richards wrote:
What's the result if a portion of the CIP claim is supported?  For example, parent supports and claims A+B.  CIP supports C and claims A+B+C?


I'm not sure whether I understand your question either....

But like I said,  priority is determined on a claim-by-claim basis.   That is, a particular claim either gets priority or it doesn't.


on 07/11/06 at 05:38:53, Isaac wrote:
I believe that if the parent has been published for 1 year before the CIP is filed, for claims not eligible for the priority of the parent, the published parent application is available under 102(b) and under 103(a).


I'll just add that, if the inventorship of the parent differs in any way from that of the CIP (which is often the case), then the published parent could potentially serve as 102(a) as well.

I think the real question is why, post-GATT, anyone files CIPs anymore.   Any thoughts?

Title: Re: CIP applications
Post by tigerpat on Jul 11th, 2006, 11:06am
How about this situation then?

Applicant files a claim to a broad genus.  The Examiner 112's the claim as lacking enablement and failing to satisfy the written description.  Applicant settles for particular species claims.  

Before the parent (above) issues, Applicant files a CIP adding subject matter to hopefully support the broad genus claim and again claims the broad genus.

First, since the Examiner 112's the broad genus claim to begin with, I don't see how he could give the broad genus claim the benefit of the parent application (even though the parent does disclose a number of species of the genus).

Second, since the parent does disclose numerous species of the genus claimed in the CIP, could the parent be used as prior art v. the CIP to anticipate the claimed genus?

Title: Re: CIP applications
Post by JimIvey on Jul 11th, 2006, 3:05pm
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.

As I understand the hypothetical, it's not possible.  If the genus is insufficiently supported, the species is similarly insufficiently supported.

Regards.

Title: Re: CIP applications
Post by Anon on Jul 11th, 2006, 3:48pm

on 07/11/06 at 15:05:23, JimIvey wrote:
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.

As I understand the hypothetical, it's not possible.  If the genus is insufficiently supported, the species is similarly insufficiently supported.


Tigerpat's post is a bit confusing, but I think this is what was meant:  

1) The parent supports the species but does NOT support the genus; and
2) the CIP supports the genus.

In such a case, and depending on dates and so forth, the species disclosed in the parent could possibly serve as prior art against the genus claims of CIP.  And in fact, this is a very common scenario.

Title: Re: CIP applications
Post by Isaac on Jul 11th, 2006, 4:08pm

on 07/11/06 at 15:05:23, JimIvey wrote:
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.


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.

The question is whether an application that fails to support a broad claim in such a way could serve as prior art against a CIP that added additional describtion to overcome the 112 rejection but did not recite that additional description in the claims.   In theory, every feature of the new claim would be found in the parent application.

I don't know the answer.   I think it ought to be possible to overcome at least a 102 rejection by arguing the original description was not enabling.  

Title: Re: CIP applications
Post by JimIvey on Jul 11th, 2006, 4:44pm

on 07/11/06 at 16:08:12, 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.

Title: Re: CIP applications
Post by Anon on Jul 11th, 2006, 5:58pm

on 07/11/06 at 16:44:06, 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 07/11/06 at 16:08:12, 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.

Title: Re: CIP applications
Post by Isaac on Jul 11th, 2006, 6:30pm

on 07/11/06 at 17:58:44, 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.


Title: Re: CIP applications
Post by Isaac on Jul 11th, 2006, 6:44pm

on 07/11/06 at 16:44:06, 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.

Title: Re: CIP applications
Post by Anon on Jul 11th, 2006, 7:14pm

on 07/11/06 at 18:30:59, 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?

Title: Re: CIP applications
Post by Isaac on Jul 11th, 2006, 7:33pm

on 07/11/06 at 19:14:03, 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.


Title: Re: CIP applications
Post by Anon on Jul 11th, 2006, 8:07pm
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 07/11/06 at 19:33:54, 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.   ;)

Title: Re: CIP applications
Post by JimIvey on Jul 12th, 2006, 10:21am

on 07/11/06 at 17:58:44, 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.

Title: Re: CIP applications
Post by Isaac on Jul 12th, 2006, 10:43am

on 07/12/06 at 10:21:47, 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.

Title: Re: CIP applications
Post by JimIvey on Jul 12th, 2006, 11:45am

on 07/12/06 at 10:43:43, 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 07/12/06 at 10:43:43, 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.

Title: Re: CIP applications
Post by Isaac on Jul 12th, 2006, 12:28pm

on 07/12/06 at 11:45:48, 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.


Quote:
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.

Title: Re: CIP applications
Post by JimIvey on Jul 12th, 2006, 1:08pm

on 07/12/06 at 12:28:22, 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.

Title: Re: CIP applications
Post by Isaac on Jul 12th, 2006, 1:59pm

on 07/12/06 at 13:08:29, 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.


Title: Re: CIP applications
Post by JimIvey on Jul 12th, 2006, 4:30pm
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.  ;-)

Regards.

Title: Re: CIP applications
Post by Anon on Jul 12th, 2006, 6:55pm

on 07/12/06 at 16:30:50, 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 07/12/06 at 16:30:50, 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.




Title: Re: CIP applications
Post by Isaac on Jul 13th, 2006, 5:40am

on 07/12/06 at 18:55:49, 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.

Title: Re: CIP applications
Post by Isaac on Jul 13th, 2006, 7:10am

on 07/12/06 at 16:30:50, 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?

Title: Re: CIP applications
Post by Anon on Jul 13th, 2006, 3:32pm

on 07/13/06 at 05:40:29, 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.


Title: Re: CIP applications
Post by Anon on Jul 13th, 2006, 4:09pm

on 07/13/06 at 07:10:26, 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.

Title: Re: CIP applications
Post by Stedham Ronger on Jul 16th, 2006, 1:33am

on 07/13/06 at 15:32:12, 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.

Title: Re: CIP applications
Post by Anon on Jul 16th, 2006, 7:43pm

on 07/16/06 at 01:33:29, Stedham Ronger wrote:
From your posts I do not think Anon knows what he is talking about.

Mr. Ronger, do you agree with the below as stated by Mr. Ivey?


on 07/11/06 at 15:05:23, JimIvey wrote:
I don't understand how you can fail to support the broad genus but succeed in supporting the specific species.  The species would require all the support required of the broader genus and support for the distinctive characteristics of the species, those that differentiate the species from other species of the genus.


If you don't agree with Mr. Ivey, then what is your position on this topic?

Title: Re: CIP applications
Post by JimIvey on Jul 17th, 2006, 12:54pm

on 07/13/06 at 05:40:29, 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.

Ah, that may be the problem.  The bulk of my practice has been in what one might call the predictable arts.  If I get too far afield from digital logic, I start feeling like I'm swimming in the deep end without my floaties.  Not really, but I liked the analogy given the weather here today.

I still have some concern about all this.  Underneath all the neat and clean digital logic is some esoteric analog mysterious stuff going on -- stuff that might not be considered "predictable."  For example, consider that a tri-state transistor is invented and a whole new era of trinary logic is born.  Not many computer-related claims limit themselves to binary logic and I doubt any computer-related applications enable doing anything using trinary logic (at the chip level, anyway).  So, invalid for lack of enablement?  Seems harsh.

I suspect the answer comes down to one of two "outs" for this situation.  First, perhaps conversion from binary logic to trinary logic is straightforward once trinary logic chips are available.  Second, perhaps the underlying machine logic is just too far from the essence of the invention to be "essential" for inclusion in the claims.

This latter point echos something I noted years ago in law school while writing a paper on the doctrine of equivalents.  While there is no protectible heart, gist, or essence of the invention, you had better have one in mind when writing the application.  The essence of the invention influences a lot of things and provides a good, strong structure around which to build your application.  In a related vein, litigators like to have a single "Wow!" statement of the invention.  That's easier to do if you have a good sense for the essence of the invention.

Regards.

Title: Re: CIP applications
Post by Isaac on Jul 17th, 2006, 1:19pm

on 07/17/06 at 12:54:16, JimIvey wrote:
Ah, that may be the problem.  The bulk of my practice has been in what one might call the predictable arts.  If I get too far afield from digital logic, I start feeling like I'm swimming in the deep end without my floaties.  Not really, but I liked the analogy given the weather here today.

I still have some concern about all this.  Underneath all the neat and clean digital logic is some esoteric analog mysterious stuff going on -- stuff that might not be considered "predictable."  For example, consider that a tri-state transistor is invented and a whole new era of trinary logic is born.  Not many computer-related claims limit themselves to binary logic and I doubt any computer-related applications enable doing anything using trinary logic (at the chip level, anyway).  So, invalid for lack of enablement?  Seems harsh.


That would be harsh, but I don't think think just introducing trinary logic creates the problem we're discussing.   The harsh result require that trinary logic allowed skipping some step or omitting some feature that was not recited in a claim but was required for binary logic.

I think the CAFC is trying to distinguish between a "sketchy" claim written to state only the elements required to find infringement of an invention and a claim drawn to more invention than the applicant possessed at the time of filing.   I don't know if such an distinction is possible.




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