In re Bilski and Gottschalk v. Benson
It is important to remember that the Supreme Court's decision in Gottschalk v. Benson is still controlling law. In that 1972 decision, the Supreme Court held unpatentable a method of converting a signal from "binary coded decimal" into "binary." The Benson method operates by using a "reentrant shift register" – a particular electronic memory circuit of the day. The rejected claim reads as follows:
8. The method of converting signals from binary coded decimal form into binary which comprises the steps of:
In Bilski, the en banc court struggles with Benson because – on its face – the rejected Claim 8 from Benson satisfies the machine-or-transformation test of Bilski. The claimed BCD conversion method is tied to a particular machine. The Bilski majority admits as much: "the claimed process operated on a machine, a digital computer, but was still held to be ineligible subject matter." According to the en banc panel however Benson's claim still fails the machine-or-transformation test because the claimed physical limits were "not actually limiting." In particular, since the only uses of the BCD converter would be on a computer, tying the claims to a computer offered no practical limitation to the otherwise preemptive claim of an algorithm.
"[I]n Benson, the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue, a particular algorithm, had no utility other than operating on a digital computer."
Thus under Bilski/Benson, tying a software algorithm to particular computer hardware may well be unpatentable subject matter if the patent would still preclude all practical uses of the otherwise unpatentable algorithm.
Notes:
Citation of law review articles. On a lark, I looked at the table of authorities for about two hundred party briefs filed in the past six months at the Federal Circuit. These briefs each cited many cases and statutes. Notably absent, however, were cites to law review articles. Out of the two hundred briefs, only two law review articles were cited — three if you count a citation to John Duffy’s Patently-O Patent L.J. article. The famous articles:
This result goes along with the rule of thumb for Federal Circuit appellate briefs — cite only Federal Circuit cases unless you have a compelling reason to do otherwise.
Wright v. Renaldo, 279 Mich. App. 526 (Mich. Ct. App. 2008)
Wright sued Renaldo and her firm for legal malpractice involving the prosecution of his patent directed to an absorbent mat. Renaldo allegedly erred in (1) failing to remove the name of an originally listed co-inventor; (2) "improperly drafted documents submitted to the patent office, and (3) failed to recognize and take steps to correct the patent because it did not adequately protect Wright's invention."
Without reaching the merits of the malpractice claim, the court agreed that the claim was barred by a Michigan two-year statute of limitations. Under Michigan law, a plaintiff "must file a legal-malpractice action within two years of the attorney's last day of service to the plaintiff or within six months of when the plaintiff discovered or should have discovered the claim, whichever is later." Here, there was evidence that Wright had been planning a malpractice claim for over two years after White revoked her power of attorney and hired different counsel.
A dissenting judge argued that the two-year time line had not expired because Renaldo had not learned of the revocation of the power of attorney until much later.
Although the patent attorney won this case, it should serve as a reminder to counsel to promptly memorialize a disengagement.
Anderson v. Pella (Fed. Cir. 2008)(non-precedential)
Anderson sued Pella and WL Gore for infringement of its window screen patent. Apparently, the patented screen allows ventilation and blocks insects, but is easier to see through than traditional screens. The claims focus on the diameter and strength of the screen wires and as well as on the screen's "transmittance" and "reflectance" properties.
Prior to KSR, the district court had rejected the defendant's summary judgment motions on obviousness – finding that the prior art references lacked a motivation to combine. After KSR, the district court reversed course – this time granting summary judgment of invalidity based on obviousness of the claimed screen. In its analysis, the district court asked and answered the following question: "would an insect screen manufacturer of ordinary skill have found it obvious to use the [prior art] screening material, decrease its reflectance value, bond it, and place it in a window frame? The answer, plain and simple is 'Yes.'" According to the lower court, the prior art mesh was the "heart" of the claimed invention, and it was a "simple act of common sense" to slightly modify the mesh and apply it to a window. Although secondary factors of nonobviousness were shown, the lower court found they were not enough to rebut a strong showing of obviousness.
Analogous Arts: On appeal, the Federal Circuit vacated – finding material facts that prevent summary judgment of obviousness. In particular, the appellate panel found that the prior art mesh might not count as nonobviousness type prior art because it "outside the scope and content of the prior art." The court based its decision on three issues: (1) the prior mesh was not in the same "insect screen manufacturing field"; (2) there was some evidence that the prior mesh would not be useable for an insect screen (teaching away); and (3) the PTO specifically considered the reference before granting the patent and should be given some deference.
Upon our review of the record in the light most favorable to Andersen, we find support adequate to overcome summary judgment on the question of whether the TWP mesh was outside the scope and content of the prior art. Andersen put forth evidence in the record that, one, the TWP mesh was not part of the insect screen manufacturing field, and, two, an insect screen manufacturer would have read the prior art to teach away from using a mesh with the characteristics possessed by the TWP mesh. This field-of-invention and teaching-away evidence, combined with the deference owed to the PTO's issuance of this patent after reviewing the same prior art references that form the basis of this obviousness challenge, raises a genuine issue of material fact as to whether an ordinarily skilled insect screen designer would have found the combination of the TWP mesh with the other prior art references obvious.
Teaching away and price feasibility: One of the 'teaching away' arguments accepted by the Federal Circuit was that of price infeasibility. Anderson had argued that the prior mesh would not have been considered by a designer because it was quite "extraordinarily expensive." In its holding, the appellate panel gave backing to the notion that a high price would discourage consideration of a potential prior art reference.
As to the third characteristic, pricing, Andersen's expert, Laurence Armstrong, stated that the TWP mesh was "extraordinarily expensive in comparison with traditional insect screen material, costing about $75.00 per square foot." It is not unreasonable to suggest that a significant difference in cost could discourage an insect screen designer from using the more expensive mesh. . . . On the whole, we think, the record creates a genuine issue of material fact as to whether the durability, transparency, and pricing of the TWP mesh would have discouraged an ordinarily skilled artisan from incorporating the mesh into an insect screen.
Summary judgment vacated.
By Mark Reichel. Mark Reichel is a patent attorney at the Ice Miller firm and writes the "daily dose of IP."
After such an exciting election, I thought I'd have some fun with a blog post and highlight a few attempts to register trademarks pertaining to our President-elect that, for reasons shown below, were unsuccessful:
"BARACK STAR" – U.S. Trademark Application Serial No. 78/471,745 in IC 016 and 025 – This application was abandoned after the USPTO refused registration for false association because "the proposed mark consists of or comprises matter which may falsely suggest a connection with U.S. Senator Barack Obama" and "[a]lthough not connected with the goods or services applicant provides under the proposed mark, the name BARACK is so famous that consumers would presume a connection with Senator Obama."
"DO YOU SMELL WHAT BARACK IS COOKING" - U.S. Trademark Application Serial No. 77/406,936 in IC 025 – This application was abandoned after the USPTO refused registration "under Section 2(c) of the Trademark Act, for the record does not include the written consent of Barack Obama, the name of the living individual identified in the proposed mark."
"PET BARACK" - U.S. Trademark Application Serial No. 77/408,020 in IC 020 – This application was abandoned after the USPTO refused registration using the same lack of consent argument as described above.
"OBAMA -- O BABY!" - U.S. Trademark Application Serial No. 78/745,546 in IC 026 – This application was abandoned after the USPTO refused registration using a false connection argument similar to the false association argument described above.
"OBAMA SO PHAT" - U.S. Trademark Application Serial No. 77/135,294 in IC 040 – This application was abandoned after the USPTO refused registration using the same lack of consent argument as described above.
"OBAMA NOT YOUR MAMA FOR PRESIDENT IN 2008" - U.S. Trademark Application Serial No. 77/037,088 in IC 040 – This application was abandoned after the USPTO refused registration for false association and lack of consent as described above.
In addition to the foregoing, I note one additional trademark application (77/086,418) that I will not describe here due to its sensitive and offensive nature, and of which I am personally pleased to see rejected for a multitude of reasons.
* * * * *
Following Mark's lead, I also found this mark for Gov. Palin [also offensive] and a host "joe the plumbers" including several actual plumbers.
[NEW RULES] The USPTO has announced final rules to implement an annual practitioner maintenance fee. According to the new rules effective December 17, 2008, a practitioner who fails "to pay the annual practitioner maintenance fee required under § 11.8(d) [will] be administratively suspended." Easy to remember, the Fee under Section 11.8 is $118.
What is the point: The $118 fee will raise two or three million dollars for the PTO. Although that money is useful, the primary purpose of the fee is not to raise money. Rather, it an easy way to cull the list of registered practitioners by removing those who are not making money as patent attorneys. In the words of the office, the purposes of the fee include "protecting the public, preserving the integrity of the Office, and maintaining high professional standards."
When folks forget to pay:
[A] paper submitted in good faith by a practitioner who does not know that he or she has been administratively suspended for failure to pay the annual practitioner maintenance fee will be
treated as unsigned. In the case of a new complete application, the applicant will receive a filing date because the signature of an attorney or agent on transmittal papers is not required. In the case of an unsigned bona fide response to an Office action, the submission will be treated in accordance with 37 CFR
1.135(c), and applicant may be given a new period of time to supply the omission. Practitioners should be aware, however, that submission of a response having an omission may affect patent term adjustment pursuant to 37 CFR 1.704(c)(7). In the case of an issue fee payment, an unsigned issue fee transmittal form may lead to abandonment of the application, in which case a petition to revive would be required.
Who can afford this?
The Office estimates that, in 2006, the average annual income in the United States of solo practitioners was $231,777; of patent attorneys who are partners in private firms, $434,464; of patent attorneys who are associates in private firms, $152,677; and of corporate IP attorneys, $198,109; and the average annual salary of patent agents in a firm in the United States was $92,761. AIPLA Report of the Economic Survey 2007.
In many ways, the high average incomes of patent attorneys and patent agents are due to the limits created by the PTO. When only a few can practice patent law, those few are able to charge higher prices. Under traditional protectionist thinking, the Bar would want to take steps that solidify the monopoly by encouraging further barriers to entry and take pains to show that the limits on practice lead to better results.
Notes:
Dear Bureaucrats:
Stuff your annual fees for attorneys and agents. You are really getting to be a bunch of greedy pigs. The fee structure is venal and complex enough as it is. Actually taxes should pay for mast of the PTO, but while you are not to blame for that, your asskissing desire to show your superiors haw you can rake in profits with nasty, petty little fees for ever trivial action is on your heads.
Stuff your continuing education also. If you people would keep your Rules of Practice up to date and written in intelligible language instead of insider bureaucratic gobbledygook there would be no need for continuing education. How hard is is to keep your Rules up to date in this era of wordprocessing? If the Manual of Patent Examining Procedure has grown from 1 inch to 5 inches in the span of a couple of decades, maybe the problem is with too many stupid petty rules and fees to understand. God knows writing patent applications isn't that hard. We need a five inch manual for this?
Are you people martyrs over there? All I ever hear is whining and attitude that the public should do all the work in prosecuting patent applications so the poor bureaucrats can twiddle their thumbs. Why don't you get it over with and specify that applicants should do a self?examination as to patentability and swear that it is accurate under penalty of law so that the Patent Office doesn't have to do anything? You people are out of control. It is time the the PTO is privatized so we get less attitude.
Ron Katznelson has become a leading patent data guru. In a recent talk at UC Davis Law School, he presented is ideas that the next focus of patent reform should be on USPTO Operations. His focus remains on (1) pendency and (2) quality without limiting patentee rights. Katznelson calls for an optional deferred examination for those applicants willing to go slow. In his schema, a third party worried about a pending application could request examination of a deferred application. With some financial incentives (such as a substantial examination fee), many voluntary deferred applications may become voluntary abandoned claims due based on obsolescence or low market potential (creating a "substantial workload reduction").
As shown below –the pendency problem is growing.
Katznelson also discussed the enjoined PTO continuation & claim rules. The beautiful graph below helps illustrate the significant number (about 30%) of patent applications having more than 5 independent or 25 dependent claims.
On the continuation side, Katznelson had to resort to a logarithmic axis to show the continuity chain distribution at the PTO.
Notes:
Earlier in the week, I wrote about Bilski in relation to the recent diagnosis patent case of LabCorp v. Metabolite. Metabolite's claim 13 reads as follows:
13. A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of: assaying a body fluid for an elevated level of total homocysteine; and correlating an elevated level of total homocysteine in said body fluid with a deficiency of cobalamin or folate.
I asked the following question to Patently-O readers and received a response from about 200 readers: It reads as follows:
Would Metabolite's claim 13 be found patentable under the reasoning of Bilski?
The response can be broken down as follows: 31% of responses would find the claim to include patentable subject matter while the remaining 69% would reject the claim under Section 101. Of those who would find the claim patentable, the vast majority (89%) reason that the claim includes a transformation. In my discussion of the case, I indicated one argument for showing how the assay step could be considered a transformation. The remaining 11% of those who would find the claim patentable say that it is tied to a particular machine or apparatus. None of the responses indicated that the claim satisfied both the machine and transformation prongs of the test.
Of the 69% of "unpatentable" responses, the majority (72%) saw the claim unpatentable as neither a machine nor a transformation. 43% of those asserting unpatentability saw the claim as unpatentable under the revived mental steps doctrine of bilski. Included in these figures is the 16% who saw the patent violating both the revived mental steps doctrine and the machine-or-transformation test.
The survey did not ask demographic data. However, of those responses using a USPTO IP address, 86% would find the claim unpatentable under Section 101.
The Secretary of Commerce (with the advice of the PTO Director) has named three new member of the Patent Public Advisory Committee (PPAC): Marc Adler; Stephen Pinkos; and Maureen Toohey. Mr. Adler is well known in the patent community as the past president of both the IPO and the ACPC. Adler has called for patent quality reforms that put more responsibilities on both the PTO and Applicants. Stephen Pinkos is a former deputy director of the PTO where he managed daily operations of the office. Maureen Toohey has her own law firm in Boston. She has apparently represented Dean Kamen in the past and clerked for Judge Rader.
The committee's purpose is to advise the PTO Director on the management of operations of the Office. The nine-member PPAC is on a three-year rotating schedule. Each year three new members are appointed. For each day of actual service, the PPAC members will be paid the equivalent of an Executive Level III salary (annual rate of about $150,000).
Next PTO Directors: The PTO has 200 years of inertia and set expectations. Today, the PTO is a billion-dollar enterprise and the PTO Director's first job is to manage that ship. However, the director should also have a visions and goals for the future of the PTO and the patent system. Along with Chief Judge Michel and a few other key players, the PTO director is seen as the leader of the US patent system. The vision of the next director will have a great impact on the potential for patent reform; international patent cooperation; and the role for industrial design protection. Part of Obama's overall agenda is to move toward an open and transparent government. The PTO has come a long way, but the new director and deputy should be on board with ways to increase the communication channels and the ability for third parties and competitors to monitor the patenting process. Many are calling for the next PTO director to have patent prosecution experience. I agree that such experience will be helpful – both in understanding the system and for credibility. However, being a career prosecutor does not necessarily coincide with having the vision and leadership necessary for the job. Lots of speculation on upcoming PTO Officials.
Stanford IP Litigation Clearinghouse: Speaking of Mark Lemley – He and attorney Joshua Walker (who also knows Obama…) are leading an amazing new project titled the Stanford IP Litigation Clearinghouse. The free service tracks over 23,000 US District Court cases filed since 2000 and includes in depth real time information "that cannot be found elsewhere in the public domain." [Invitation to Launch]
Wii Infringing? Motiva has sued Nintendo in the Eastern District of Texas. The young superstar plaintiff's attorney Mark Lanier is representing the patentee. U.S. Patent 7,292,151. In his blog, Blaise Mouttet noted the potential that the Wii infringed back in 2007. [Link]
Based on the USPTO's most recent numbers on examination, I created an updated table of the average delay until a first office action is mailed from the PTO. These numbers reflect an average for each technology center as it operates today. The 3.7 year delay in Fuel Cell and Battery Technology (TC 1795) means that the applications receiving first office actions from that TC during the past three months were filed 3.7 years ago on average — taking us back to early 2005. The numbers do not necessarily reflect how long it would take for an application filed today to make it through. (Although it is perhaps one of the better estimates that we have on hand.).
Technology Center
Description
Months
Years
1795
Fuel cells batteries solar
44.8
3.7
1791
Tires, adhesive bonding, glass
43.8
3.7
1797
Separation, purification
43.8
3.7
1610
Pharmaceutical formulations
42.9
3.6
3680-B
Business Methods
42.3
3.5
3620
Electronic Commerce
40.7
3.4
1792
Coating etching cleaning
40.4
3.4
1794
Food stock materials
39.4
3.3
2130
Cryptography security
39.2
3.3
2140
Computer networks
38.8
3.2
2190
Interprocess communications
38.5
3.2
2620
Television and TV Recording
37.2
3.1
1796
Organic chemistry and polymers
35.4
3.0
1793
Metallurgy metal working
34.9
2.9
2610
Digital Communications General
34.8
2.9
1620
Organic chemistry
34.1
2.8
3640
Aeronautics
34.1
2.8
3680-A
Business Methods - Finance
33.9
2.8
3630
Static structures
30.5
2.5
3650
Material handling
29.3
2.4
2110
Computer architecture
29.2
2.4
3610
Surface transportation
29.1
2.4
2120
Miscellaneous computer
28.3
2.4
3780
Package and Article Carriers
26.9
2.2
2160
Database and file management
26.9
2.2
3670
Wells earth boring
26.7
2.2
3680-A
Machine elements
26.7
2.2
1630
Molecular biology
25.9
2.2
1650
Fermentation microbiology
25.6
2.1
2180
Computer architecture
24.9
2.1
3750
Fluid handling and
24.9
2.1
1640
Immunology receptor ligands
24.2
2.0
2811+
Semiconductors and
23.9
2.0
2871+
Liquid crystals optical
23.7
2.0
3730
Medical instruments
23.4
2.0
3710
Amusement
22.9
1.9
2816+
Electronic circuits static
22.6
1.9
3660
Computerized vehicle
22.4
1.9
3770
Respirators Therapeutic
21.9
1.8
2831+
Electronic conductors
21.9
1.8
3760
Body treatment
21.4
1.8
1660
Plants
21.3
1.8
3720
Manufacturing devices
20.4
1.7
In re Baselle Poliolefine Italia (Fed. Cir. 2008)
Nobel Prize winning chemist Giulio Natta filed for patent protection in 1954 on a process for polymerizing ethylene. One of Natta's continuation patents issued in 2002. Later that year, the PTO initiated a Director-ordered reexamination based on obviousness type double patenting. Later, the BPAI affirmed the rejection. On appeal, the Federal Circuit affirmed the rejection in a 2-1 split. The majority held that the one-way obviousness type double patenting rejection was appropriate. Judge Newman dissented – arguing that the reexamination was conducted illegally and that the court's findings were unsupported by the evidence.
The interesting legal issue here is the reminder that the obviousness determination for double patenting may be different than Section 103(a) obviousness.
Indeed, "this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting." In re Braat, 937 F.2d 589 (Fed. Cir. 1991). Hence, we find no basis for reversing the Board's decision merely because the Board failed to expressly set forth each of the Graham factors in its analysis. The Board carefully considered claim 1 of the '987 patent and the claims of the '687 patent and determined that a person of ordinary skill in the art would have found the '687 patent claims to have been obvious. We find no error in the Board's analysis.
Of historical interest here is the timeline:
Ex parte Bo Li, Appeal 2008-1213 (BPAI 2008)
Li's patent application claims a computer program product stored on a computer readable memory adapted be executed to implement a report generation method. The computer program product is a typical Beauregard claim. In what appears to be the first decision to cite the new Bilski machine-or-transformation test of patentable subject matter, the BPAI overturned the examiner's Section 101 rejection – finding that the product claim includes statutory subject matter.
Here, the examiner argued that the claimed computer program product could not be patentable because it did not produce "a useful, concrete and tangible result." On appeal, the BPAI held that Bilski expressly rejected that statement from State Street. However, because Li's claim was for a product, the BPAI did not apply the Bilski machine-or-transformation test to determine patentability. Rather, the court merely relied on the notion of that claimed products – even when written as Beauregard claims – are patentable.
"It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101."
Li won the Section 101 battle, but still lost the war – the BPAI affirmed the examiner's contention that the claim was also unpatentable as obvious.
Notes:
42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
[Read Tim Wilson’s Paper] Tim Wilson (Senior IP Counsel at SAS US) has been concerned about patent quality for some time. In part, the sheer number of patent applications being filed creates a host of problems. Wilson's solution is to raise patent fees – he says the fees should go as high as $50,000 for large corporate applicants. The result – according to natural tendencies of supply and demand – is that fewer applications will be filed and fewer patents will issue. In all likelihood, however, those that are filed will be better applications covering higher quality inventions.
Wilson did not simply pull his $50,000 figure out of his ear. Using the powerful computing resources of SAS, Wilson calculated an estimated demand curve for patent applications using both (1) historical filing reactions to increases in PTO fees and (2) an assumption that the budgets of corporate patent departments is fairly inelastic. Wilson then created his Figure 5 – showing the demand curve for patent applications drawn with respect to the patent application fees.
Wilson's approach is admittedly only an estimate, but his intuition has to be correct that a dramatic increase in PTO fees would lead to a dramatic decrease in PTO filings.
An average high technology patent contains a minor improvement on a small portion of a product and the patent application is typically written using outside counsel working for a flat fee of a few thousand dollars. Imagine what would happen to the high technology company's patent process if each patent application cost $50,000 just to file. The high technology company would file far fewer, but more important patent applications and they would spend more time and effort doing so. The pharmaceutical company's process probably would not change much because a billion dollar decision depends on the outcome of the patent process.
What would happen to non-practicing entities, sometimes derisively referred to as patent trolls? I believe that these entities will change to patent market facilitators, or cease to exist. When the value of all patents is increased substantially, it is very unlikely that any patent will be available to fall to these non-practicing entities. First, each individual patent will be more valuable to the current owner of that patent, so it will be less likely that an owner would be willing to part with it to a troll. Second, if a company does fail, competitors of that company may be more willing to buy that patent rather than allow it to fall to a company that may sue the competitor. Finally, fewer issued patents mean that it will be easier for companies to monitor patents issuing in their product space and less likely that they will allow those patents to fall into the hands of a troll.
DDC Comment: Wilson's proposal has some merit, and his work on the demand curve is especially interesting. However, the proposal suffers from three fundamental problems: First, the proposal implicitly equates economic value with technologic value – the two are related but different. Many important technical advances have only limited economic value, but still serve as building blocks for future advances. (i.e., standing on the shoulders of giants). Second, the proposal greatly favors technologies where the economic value is well known up front. Again, many important technologies are eventually found valuable – but the very high up-front price will greatly limit those applications – and consequently, the upstream incentive to innovate in that area. Third, the proposal favors firms with cash – i.e., those that have performed well in the past and have saved their money. However, many innovation experts believe that most of the breakthrough work comes from these mainstream companies. To his credit, Wilson addresses this problem by stating that the high-price only applies to large companies. However, that approach would tend to allow the "non-practicing entities" to continue to obtain patents (against one of Wilson's primary goals). In addition, the prospect of small entities paying only $500 while large entities pay $50,000 would surely lead to other political and practical problems.
Prof. Paul Janicke at the University of Houston Law Center is an expert on patent litigation statistics. He recently sent me a note about some recent trends in the filing of patent complaints.
Over the last three years, patent lawsuit filings have been fairly steady at around 2,700 annually. This year to date they seemed on track to stay at that level or a little higher, with filings through Oct. 31 standing at 2,327.
However, filings in recent months are down about 20%, possibly due to the general financial conditions of September and October.
Patent Suits filed in September and October (all districts):
Year
Filings in Sept.-Oct.
2008
409
2007
513
2006
486
Eastern District of Texas patent suit filings in September and October:
Year
ED Tex Filings in Sept.-Oct.
2008
55
2007
68
2006
59
This decision is nothing new. Broad claims must either be supported by multiple embodiments or some general principles describing how the single embodiment is applicable to other configurations. Failing that, a broad claim may fail the enablement prong. As seen here, even when enabled, a broad claim without sufficient support will be invalid under the written description requirement.
In re Alonso (Fed. Cir. 2008)
The PTO Board of Appeals (BPAI) rejected claim 92 of Kenneth Alonso's for failing the written description requirement of Section 112. "To satisfy this requirement, the specification must describe the invention in sufficient detail so that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." (quoting case). In an opinion written by Judge Stearns (D.M.A.) sitting by designation, the Federal Circuit affirmed.
Claim 92 of the Alonso patent application claims a "method of treating neurofibrosarcoma in a human by administering an effective amount" of an idiotypic monoclonal antibody (mAb) secreted in a human-human cell hybridoma.
In his application, Alonso only described the preparation of a single mAb, but claimed essentially all Mab's that bind to neurofibrosarcoma, and the PTO found that a "skilled artisan would reasonably conclude that applicant was clearly not in possession of the claimed genus of compounds. Applicant should direct the claim language toward the only described embodiment (e.g., a mAb produced by hybridoma HB983)."
Standard of Review: The PTO's factual determinations are reviewed for "substantial evidence." Thus, the Federal Circuit will affirm when "a reasonable mind might accept [the evidence] as adequate to support a conclusion." Even if the Federal Circuit might ultimately have seen the facts differently, it will affirm if the PTO's position is reasonable.
Predictability: The Federal Circuit acknowledged that disclosure of a single embodiment can be sufficient for a broader genus claim. However, more disclosure is necessary when the composition and effectiveness of members of the genus is heterogeneous or unpredictable.
We have previously held in a similar context that "a patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated." Noelle v. Lederman, 355 F.3d 1343, 1350 (Fed. Cir. 2004).
Alonso argued that his single embodiment should be given more weight because he had actually reduced it to practice (unlike the Rochester COX-2 case). The Federal Circuit rejected that argument because Alonso had not provided the necessary predictive information – "nothing about the structure, epitope characterization, binding affinity, specificity, or pharmacological properties common to the large family of antibodies implicated by the method."
Notes:
