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[copatents]

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.  

[Anon]

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?

[Bill Richards]

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.

[Isaac]

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?

[Bill Richards]

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?

[Anon]

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.

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?

[tigerpat]

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?

[JimIvey]

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.

[Anon]

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.

[Isaac]

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.  

[JimIvey]

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.

[Anon]

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?

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.

[Isaac]

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.

[Isaac]

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.  

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.

[Anon]

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?