Patent Law

Enablement, for 102 and for 112

By Lawrence B. Ebert, Esq.

The CAFC in Rasmusson v. SmithKline quoted BMS v. Ben Venue, 246 F.3d 1368 (CAFC 2001): newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent. The question of whether a reference teaches away is irrelevant in an anticipation analysis, citing to Celeritas v. Rockwell, 150 F.3d 1354 (CAFC 1996).

Separately, the CAFC got into the differences between enablement for claim-supporting disclosures vs. claim anticipating disclosures, citing In re Luckach, 442 F.2d 967 and In re Hafner, 410 F.2d 1403 (CCPA 1969).

***UPDATE: from a board, discussing Rasmusson (Aug 13)

I am really struggling to understand this case. It has always been my understanding that a prophetic disclosure was sufficient to support a claim, so long as it adequately teaches how to make and use, and provides written description, and is correct. The question of whether the disclosure is correct can only be challenged if there is reason to doubt the truth of the assertion, by if the prima facie case is made, applicant can rebut the rejection by submitting the required proof via a 132 Declaration, and I have NEVER before heard of the necessity of that proof being submitted (or, really, the concession to the rejection, just to get the case allowed) causing applicant to lose priority to his ancestor applications (assuming they all supported the claim prophetically as well). Prophetic claims have always been, to my understanding, perfectly fine claims, so long as your prophesy is correct, and I have never heard before of losing priority in a continuation when a 132 Declaration is required. What about In re Langer and In re Marzocchi?

On the differences between claim-anticipating disclosures and for claim-supporting disclosures, see also

The Patent Hawk blog --> There's a gaping double standard of "ordinary skill in the art" between the current enablement regime and prior art invalidity. KSR-empowered obviousness, with its omnificent, creative everyman, allows leaps of technology to damn patentability. In Leapfrog v. Fisher-Price & Mattel, an electronic child learning toy is obvious in view of an ersatz mechanical version lacking claimed features, combined with other technologies necessary to make the old toy seem shiny.

In Sitrick, Joe "KSR" Ordinary would have had no problem adapting the video teaching to movies.

Sitrick and ATI both went to claim scope covering different but equivalent technologies.

Where is the line now drawn for § 112, ¶ 1? What of enablement for the same technology? Is a genus claim invalid for asserting against a different species from that disclosed when the technologies are identical?

At what point does "undue experimentation" take the stage?

See also Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333, 1336 (CAFC 1990) and Vas-Cath, 935 F.2d 1555

Harold Wegner wrote:

The result of Steenbock [In re Steenbock, 83 F.2d 912 (CCPA 1936)] is considered unfair to some. Yet, the law of Steenbock and Ruscetta has been maintained through the years:

?Appellants ? contend that ?there is an inconsistency constituting an inequity in rejecting the claims as fully met by the [applicant?s counterpart] British patent under 35 USC 102[(b)], while at the same time holding that appellants cannot obtain the benefit of the filing date of the U.S. counterpart.? What they are saying, in terms of the statute, is that if ?the invention was * * * described? in the British [counterpart] reference within the meaning of § 102(b), there must have been a ?description of the invention? in the corresponding grandparent application within the meaning of the first paragraph of § 112. This argument appears to overlook the law that the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes (see, e.g., In re Ruscetta, 255 F.2d 68 (CCPA 1958)), whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure. See, e.g., In re Ahlbrecht,[435 F.2d 908 (CCPA 1971)]. ?. If the law in th[is] situation[ ] really produces inequities, the proper remedy is in Congress.?22

More than thirty years after Ruscetta, the author of that opinion explained the Ruscetta doctrine yet again as the dean of the Federal Circuit:

?[A] subtle distinction [exists] between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between ?claim-supporting disclosures? and ?claim-anticipating disclosures? was dispositive in In re Lukach, 442 F.2d 967 (CCPA 1971), where the court held that a U.S. ?grandparent? application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, ?the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....? 23

**
from Ex parte Dunifon -->

We do note
that the C.C.P.A. has recognized a subtle distinction between a written
description adequate to support a claim under §112 and a written description
sufficient to anticipate its subject matter under §102(b).

***
RASMUSSON, 413 F.3d 1318

Full post as published by IPBiz on September 07, 2008 (boomark / email).