The Patent Document I

1
The Patent Document I

• Class Notes January 21, 2003
• Law 677 Patent Law Spring 2003
• Professor Wagner

2
Todays Agenda

• The Enablement Requirement
• The Written Description Requirement
• Debating the Enablement W/D Requirements

3
The Standards for Patentability

• A valid patent must be . . .
• Fully and appropriately described ( 112)
• In compliance with statutory bars ( 102)
• Novel ( 102)
• Nonobvious ( 103)
• The work of the inventors ( 116)
• Useful ( 101)
• Within the appropriate subject matter ( 101)

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The Enablement Requirement

• 35 U.S.C. 112. - Specification
• The specification shall contain a written
  description of the invention, and of the manner
  and process of making and using it, in such full,
  clear, concise, and exact terms as to enable any
  person skilled in the art to which it pertains,
  or with which it is most nearly connected, to
  make and use the same, and shall set forth the
  best mode contemplated by the inventor of
  carrying out his invention. . . .

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The Enablement Requirement

• 35 U.S.C. 112. - Specification
• The specification shall contain a 1 written
  description of the invention, and 2 of the
  manner and process of making and using it, in
  such full, clear, concise, and exact terms as to
  enable any person skilled in the art to which it
  pertains, or with which it is most nearly
  connected, to make and use the same, and shall
  set forth the 3 best mode contemplated by the
  inventor of carrying out his invention. . . .

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The Enablement Requirement

• OReilly v Morse (1854)
• Claim 8 (p. 164)
• I do not propose to limit myself . . .
• The essence of my invention being . . .
• Consider
• If the enablement requirement has to do with the
  specification, why the focus on Claim 8? (Is the
  patent valueless with the loss of Claim 8?)
• What defect in Claim 8 does the majority object
  to? (On what philosophical basis, if any, does
  the objection rest?)
• How does the dissent respond? (Their theory?)
• How would you re-write Claim 8 to satisfy the
  majority?

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The Enablement Requirement

• The Scope of the Enablement Requirement
• How might there be said to be two purposes of the
  enablement requirement?
• Can you reconcile Morse and the American Bell
  cases? (p. 172)
• By what standard should we evaluate the scope of
  the disclosure? (How does this connect to the
  twin purposes?)

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The Enablement Requirement

• In re Glass (CCPA 1974)
• This rejection is of all claims. What is
  different here from Morse?
• What was the problem with the specification?
• Didnt the (slightly) subsequent patents support
  the spec.?
• What is the date by which disclosure is measured?
  
• Is this the right date? (Consider the purposes of
  Enablement.) Pros and cons?
• Why would the applicant file an app like this?
• What would have been the easiest way to avoid
  this problem?
• Note a trap what could the applicant do in
  response to the PTO rejection?

9
The Enablement Requirement

• The Three Principles of Enablement
• The scope of disclosure required scope of the
  claims.
• Can you claim more broadly than you disclose?
  Explain.
• If some experimentation is required to actually
  make the invention, is the claim enabled?
• The quantity of disclosure is related to the
  predictability in the art.
• Can you rely on state of the art for
  enablement?
• When should you deposit? Are there risks?
• The measurement of the disclosure is as of the
  filing date.
• What if you havent yet made your device
  (reduced it to practice) as of the filing date?

10
The Written Description Requirement

• 35 U.S.C. 112. - Specification
• The specification shall contain a 1 written
  description of the invention, and 2 of the
  manner and process of making and using it, in
  such full, clear, concise, and exact terms as to
  enable any person skilled in the art to which it
  pertains, or with which it is most nearly
  connected, to make and use the same, and shall
  set forth the 3 best mode contemplated by the
  inventor of carrying out his invention. . . .
• How does the Written Description requirement
  differ from enablement? (Statutory clues?)

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The Written Description Requirement

• Vas-Cath v Mahurkar (Fed. Cir. 1991) (Rich, J.)
• M wants priority from a design patent app.
  Why?
• Because of this, what is the courts real
  question?
• How does the court resolve the range of
  variation question?
• Consider the evidence (p. 221)
• What does the court say is the true purpose of
  w/d requirement?
• What is the standard?
• Is this any different than enablement?

12
The Written Description Requirement

• Gentry Gallery v Berkline (Fed. Cir. 1998)
  (Lourie, J.)
• Claims recliner sofa, controls anywhere
• Disclosure recliner sofa, controls on the
  console
• Can Gentry Gallery be reconciled with Vas Cath?

13
Debating Enablement vs Written Description

• The Enzo Biochem Cases
• Enzo I (Fed. Cir., April 2002) (Lourie, J.)
• Claims to deposited nucleotides insufficient (as
  a matter of law) to satisfy written description.
• Is this consistent with Vas Cath?
• How is this significant doctrinally?
• Consider Why does Enzo deposit rather than
  describe? Why does Enzo claim variations of the
  material as well?
• Enzo II (Fed. Cir., July 2002) (Lourie, J.)
• Claims to deposited nucleotides sufficient to
  satisfy written description.
• Enzo III (Fed. Cir., July 2002) (various) (order
  denying en banc)
• What do the dissenters say? Do you agree? Will
  the Court change? (Count the votes.)

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• Next Class
• The Patent Document II
• Best Mode
• Case Studies Complex Technology
• Inventorship