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(Message started by: InSoloLand on Dec 15th, 2007, 6:34pm)

Title: Claim extreamly broad, but simple art.. Lizardtech
Post by InSoloLand on Dec 15th, 2007, 6:34pm
I am working on an opinion and am wondering how much I can rely on Lizardtech. Now I know that for the most part, it is known for the following holding: “Claims are not limited to preferred embodiments, but, if there are no other embodiments, and no other disclosure, then they may be so limited.”  But I see other statements that make me question the limited application to one embodiment. The next sentence states: “One does not receive entitlement to a period of exclusivity for what one has not disclosed to the public.” And another line contends that claims “must be interpreted, in light of the written description, but not beyond it, because otherwise they would be interpreted to cover inventions or aspects of an invention that have not been disclosed.”  The Fed Cir. also states in Nation Recovery Tech that the “scope of the claims must be less than or equal to the scope of enablement.”

However, I am confronted with a patent that has an amended very broad claim (added in response to a restriction requirement and asserted to be generic) that covers several disclosed embodiments, but the specification fails to disclose (or event hint) at the structure my client would like to produce. It is clear to me that the client’s structure was not in the possession of the Inventor at the time of the disclosure. However, if the claim is not limited by the scope of the disclosure, the client’s design will most likely infringe.    

Let me qualify the situation, the product is in a crowded simple art.  However, 13 years after the initial inventor’s disclosure, my client’s design does not appear to be anticipated anywhere, thus I believe it to be novel and most likely unobvious.  

So is there a suggestion on the scope of a new broader claim (thus not part of the original disclosure) with several embodiments disclosed, but fails to indicate the structure of my client’s design. Otherwise can an argument be made for lack of enablement  (there could be thousands of ways to do what is claimed, but it is in a very simple art)?

Any help would be appreciated.

Title: Re: Claim extreamly broad, but simple art.. Lizard
Post by dab2d on Dec 16th, 2007, 11:47pm
It sounds like you may want to make argumets for both limiting the scope and invalidity based upon enablement. It sounds related to a situation I am currently having.

For enablement I suggest looking at this case:

Liebel-Flarsheim Co., et al. v. Medrad, Inc.

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