Written Description and Novelty

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Written Description and Novelty

• Intro to IP
• Prof Merges 1.22.09

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The Incandescent Lamp Patent
Incandescing conductor
Bamboo discovered as an incandescing conductor.
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Claims page 262

• 1. An incandescing conductor for an electric
  lamp, of carbonized fibrous or textile material
  and of an arch or horseshoe shape, substantially
  as hereinbefore set forth.

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Sawyer and Mann Patent
Claimed All Fibrous and textile material
(6,000 plus embodiments)
Enabled Carbonized paper, plus?
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Enablement Principles
The thing you have actually built picture claim
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Enablement Principles
The limits of what you legally enable
The thing you have actually built picture claim
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The Written Description Requirement
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
Gentrys Patent
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US Pat. No. 5,064,244
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Claim 1

• A sectional sofa comprising
• a pair of reclining seats disposed in parallel
  relationship with one another in a double
  reclining seat sectional sofa section being
  without an arm at one end . . . , each of said
  reclining seats having a backrest and seat
  cushions and movable between upright and reclined
  positions . . . ,

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• a fixed console disposed in the double reclining
  seat sofa section between the pair of reclining
  seats and with the console and reclining seats
  together comprising a unitary structure, said
  console including an armrest portion for each of
  the reclining seats said arm rests remaining
  fixed when the reclining seats move from one to
  another of their positions,

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Claim 1 (contd)

• and a pair of control means, one for each
  reclining seat mounted on the double reclining
  seat sofa section . . . .

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Object of the invention language
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From the specificiation
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Casebook p. 177

• In this case, the original disclosure clearly
  identifies the console as the only possible
  location for the controls. It provides for only
  the most minor variation in the location of the
  controls, noting that the control may be mounted
  on top or side surfaces of the console rather
  than on the front wall . . . Without departing
  from this invention.

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• The only discernible purpose for the console
  is to house the controls. As the disclosure
  states, identifying the only purpose relevant to
  the console, another object of the present
  invention is to provide . . . a console
  positioned between the reclining seats that
  accommodates the controls for both of the
  reclining seats.

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Casebook, p. 177

• Thus, locating the controls anywhere but on the
  console is outside the stated purpose of the
  invention.

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• Although not dispositive, because one can add
  claims to a pending application directed to
  adequately described subject matter, Sproule the
  inventor admitted at trial that he did not
  consider placing the controls outside the console
  until he became aware that some of Gentrys
  competitors were so locating the recliner
  controls.

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Misappropriation by claim amendment

• Merges, Software and Patent Scope A Report from
  the Middle Innings, 85 Tex. L. Rev. 1528 (2007).

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Enabled?
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See discussion n. 1 p. 178

• What is the relationship between enablement and
  written description?

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The Written Description Requirement
Scope of enablement vs. scope of that which you
have described
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
The term console does not cover a sofa section
having a seat back that folds down to serve as a
table top. (This was to distinguish Gentrys
sofa from prior art.) The Federal Circuit
limits the scope of the claim to cover sofas in
which the recliner control is located on the
console and invalidates 12 claims in the patent
under 112. The court affirmed that Berkline
had not infringed on Gentrys patent by
constructing reclining chairs separated by a
center seat whose back cushion pivoted to form a
table.
Original Claim Language
Prosecution History
Amended Claim Language
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Gentry Gallery, contd
Canon 1 Claims should be interpreted such that
the preferred embodiment falls within their scope.
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
The term console does not cover a sofa section
having a seat back that folds down to serve as a
table top. (This was to distinguish Gentrys
sofa from prior art.) The Federal Circuit
limits the scope of the claim to cover sofas in
which the recliner control is located on the
console and invalidates 12 claims in the patent
under 112. The court affirmed that Berkline
had not infringed on Gentrys patent by
constructing reclining chairs separated by a
center seat whose back cushion pivoted to form a
table.
Original Claim Language
Prosecution History
Amended Claim Language
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Patent Specification
Enabled subject matter everything the inventor
teaches to one of skill in the art.
Enabled
Described embodiments of the invention
everything the inventor adequately describes to
one in the art everything the inventor shows she
is in possession of or contemplates as embraced
by her invention
Specification
Described
Claim 1 Original Application
Claim 2
Claimed in C-I-P or amended application
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Specification Re-filed
If the inventor re-files the specification at a
later date, she cannot claim what the first
filing enabled but failed to describe.
Enabled
Described
Claim 1 Original Application
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Whats claimable?
Dedicated to the Public
Competitor
Original Description
Competitor
Taught by Patent
Competitor
Claimable by original inventor
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Gentry Gallery v. Berkline Corp.
Enabled 2 reclining seats in a sectional sofa
controls not located on arms of chair
Enabled
Specification for Gentry patent
Described pair of reclining seats in a
sectional sofa with a fixed console that houses
the control means
Described
Claim 1
Claimed pair of reclining seats in a sectional
sofa, a fixed console, and a pair of controls.
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Novelty 102
A person is not entitled to a patent if the
invention was
in the prior art (as defined by 102 (a), (e),
(g))
barred under 102 (b), (c), (d)
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CLAIM 1 ELEMENTS
Rotating handle at end of bar
U-shaped bar
Cutting element attached to bar
Base, with passageway
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Sample Publication
Cheese Industry Today
New Trends in Slicers by J. Smith
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient For
tightened wire designs,
cutting bar shapes U-shaped,
new cutting elements
tightened wire
passageway in the base.
attached to the bar
tightening can be achieved by rotating the
handle.
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Cheese Industry Today
New Trends in Slicers by J. Smith
NO PATENT GRANTED
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient For
tightened wire designs,
NOVELTY REQUIREMENT NOT MET
cutting bar shapes U-shaped,
new cutting elements
tightened wire
attached to the bar
passageway in the base.
tightening can be achieved by rotating the
handle.
Claim Elements
Claim Elements in Publication
Rotating handle at end of bar
Rotating handle at end of bar
Cutting element attached to bar
Cutting element attached to bar
Base, with passageway
Base, with passageway
U-shaped bar
U-shaped bar
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Sample Publication Revised
Cheese Industry Today
New Trends in Slicers by J. Smith
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient
cutting bar shapes U-shaped,
new cutting elements
tightened wire
passageway in the base.
attached to the bar
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Invention Compared with Prior Art
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
Smith Article
X
X
X
Jones Patent
X
X
Adams Slicer
X
X
INVENTIONNOT ANTICIPATED
NOVELTY REQT MET PATENT GRANTED
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Novelty (Anticipation) 102(a) Versus
Statutory Bars 102(b)

• Novelty/Anticipation concerned with NEWNESS is
  it original to the patent applicant/patentee?
• Statutory Bars concerned with TIMELINESS did
  the inventor file soon enough?

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Critical Concept the Critical Date
The Invention Date
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Critical Concept the Critical Date
The Invention Date
The Prior Art
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Earlier Invention, Earlier Critical Date, LESS
PRIOR ART
The Invention Date
The Prior Art
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Novelty Critical Date Example
Reduction to practice 7/12/1886
Filed 6/7/1889
Conception Summer 1886
Unpacking the invention date
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Rosaire v. Baroid
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Palestine, Texas
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(No Transcript)
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Horvitz publications

• Horvitz, L., 1939. On Geochemical Prospecting.
  Geophysics, V. 4, No. 3, pp. 210-228. Horvitz,
  L., 1945. Recent Developments in Geochemical
  Prospecting for Petroleum. Geophysics, V. 10, pp.
  487-493. Horvitz, L., 1950. Chemical Methods.
  In J.J. Jakosky (Editor), Exploration Geophysics
  (2d ed.). Trija Publishing, Los Angeles, pp.
  938-965. Horvitz, L., 1969. Hydrocarbon
  Geochemical Prospecting After Thirty
  YearsHorvitz, L., 1972. Vegetation and
  Geochemical Prospecting for Petroleum. AAPG
  Bull., V. 56, pp. 925-940. Horvitz, L., 1985.
  Near-surface Hydrocarbons and Non-hydrocarbon
  Gases in Petroleum Exploration. Presented at
  Asso. Petrol. Geochem. Explor. AAPG Rocky
  Mountain Section, Denver, Colo., June, 1985.

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Rosaire v Baroid

• Section 102(a) A person shall be entitled to a
  patent unless
• (a) The invention was known or used by others in
  this country, or patented or described in a
  printed publication in this or a foreign country,
  before the invention thereof by the applicant for
  patent.

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• The invention was known or used by others in this
  country
• - Note the national limitation here
• What does it mean to be known or used?
• Why was Teplitz teams use not enough by itself
  to anticipate?

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Rosaire (contd)

• Rosaires argument
• Top of p. 404
• Courts response --

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Rosaire v Baroid

• With respect to the argument advanced by
  appellant that the lack of publication of
  Teplitz's work deprived an alleged infringer of
  the defense of prior use, we find no case which
  constrains us to hold that where such work was
  done openly and in the ordinary course of the
  activities of the employer, a large producing
  company in the oil industry, the statute is to be
  so modified by construction as to require some
  affirmative act to bring the work to the
  attention of the public at large.

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In re Hall

• Section 102(b) case
• But same standard for publication under 102(a)
  and 102(b)
• See Rosaire case
• Reissue patent application
• Protest during reissue

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Foldi Thesis -- Freiburg
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Freiburg
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Evidence of publicness

• Index cataloguing
• Open to public