112‎ > ‎

not in MPEP

112 - cases cited in BPAI decisions that are not in MPEP

The court has "found adequate written descriptive support for a claimed invention where the disclosure specifies ‘relevant identifying characteristics,’ such as ‘complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics.’" In re Alonso, 545 F.3d 1015, 1022 (Fed. Cir. 2008) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002)).
As stated in Ariad Pharms., Inc. v. Eli Lilly and Co.,

the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. . . . The term "possession," however, has never been very enlightening. It implies that as long as one can produce records documenting a written description of a claimed invention, one can show possession. But the hallmark of written description is disclosure. Thus, "possession as shown in the disclosure" is a more complete formulation. Yet whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. 598 F. 3d 1336, 1351 (Fed. Cir. 2010) (en banc).

“The written description requirement . . . ensures that when a patent claims a genus by its function or result, the specification recites sufficient materials to accomplish that function-a problem that is particularly acute in the biological arts.” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352-53 (Fed. Cir. 2010).


That ordinarily skilled artisans could carry out the recited function in a variety of ways is precisely why claims written in “means-plus-function” form must disclose the particular structure that is used to perform the recited function. By failing to describe the means by which the access control manager will create an access control list, Blackboard has attempted to capture any possible means for achieving that end. Section 112, paragraph 6, is intended to prevent such pure functional claiming. Aristocrat, 521 F.3d at 1333. Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009).
The Federal Circuit has stated that simply disclosing a general purpose computer as the structure to perform the claimed function does not meet the corresponding structure requirement of 35 U.S.C. § 112 sixth paragraph. Aristocrat, 521 F.3d at 1333. Rather, "the corresponding structure for a § 112 paragraph 6 claim for a computer-implemented function is the algorithm disclosed in the specification." Id (citing Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)).


“An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).


“To satisfy the written description requirement in the case of a chemical or biotechnological genus, more than a statement of the genus is normally required. One must show that one has possession, as described in the application, of sufficient species to show that he or she invented and disclosed the totality of the genus.”
Carnegie Mellon University v. Hoffmann-La Roche Inc. , 541 F.3d 1115, 1126 (2008).


"The enablement requirement is met if the description enables any mode of making and using the invention." Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1361 (Fed. Cir. 1998) (quoting Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991)).

Written Description Training Materials (http://www.uspto.gov/web/menu/written.pdf)


It is also well settled that "the reference must be enabling and describe the applicant's claimed invention sufficiently to have placed it in possession of a person of ordinary skill in the field of the invention." In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994).


“The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant. A claim is not ‘indefinite’ simply because it is hard to understand when viewed without benefit of the specification.” S3 Incorporated v. NVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001).


[W]e note that working examples are not required to satisfy 35 U.S.C. § 112, first paragraph. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).