EXAMPLES OF PATENT APPLICATION REJECTIONS UNDER 35 U.S.C. 112


Examples of Enablement Requirement

Examples of Description Requirement

Examples of Best Mode Requirement


EXAMPLES OF ENABLEMENT REQUIREMENT

(found at http://www.uspto.gov/web/offices/pac/dapp/35usc112.htm#example)


The Patent and Trademark Office had rejected claims for lack of enablement in a "Hot-Dip Metal Coating Method and Apparatus" because the cooling means required by the invention was not claimed at the exit side of the treatment bath as described by the specification. The Court stated that the cooling means at the exit side of the treatment bath was merely a preferred embodiment and the PTO had failed to substantiate its rejection with evidence or reasoning that location of the cooling means elsewhere would not achieve the desired result. In re Mayhew, 179 USPQ 43 (CCPA 1973).


In a case involving the growth of linear crystals grown artificially from the vapor phase of crystal producing materials, the Court held that the general description in the specification of the temperature, pressure and vapor saturation requirements, without the disclosure of a specific example, was not sufficient to meet the requirements of the first paragraph of 35 U.S.C. 112. The court further held that the sufficiency of an application under 35 U.S.C. 112, first paragraph, must be judged as of its filing date, and therefore, later publications cannot be relied upon to supplement the disclosure. In re Glass, 181 USPQ 31 (CCPA 1974).


In Dinh-Nguyen, applicants were claiming a method of deuterating an organic compound. The Office alleged that because side reactions might occur, there was "at least a strong probability that the invention as broadly claimed encompasses significant areas wherein the process would be inoperative, or at the least, inadequately disclosed." However, the Court found that since there was a general discussion of the claimed process, as well as three specific examples which demonstrated the general applicability of the process, the disclosure satisfied the enablement requirement of 35 U.S.C. 112, first paragraph. In re Dinh-Nguyen, 181 USPQ 46, 47 (CCPA 1974). In a case involving the making of sugar from starch, claims requiring an initial hydrolysis to a D.E. value of "less than about 15" units were rejected as broader than the enabling disclosure because the examples in the specification ranged between 5 and 15. In reversing the first paragraph, 35 U.S.C. 112 rejection, the Court stated that "less than 15" would merely inform one skilled in the art that anything "less than 15" would be operable, and the specification itself had demonstrated that values "between about 5 and about 15" would work. Furthermore, applicant submitted an affidavit to demonstrate that the teaching in the specification was truly enabling showing values of "1.4" to "6.7" as operable. The Court held the evidence clearly demonstrated that the lower limit of "about 5" specifically disclosed was not critical, and that values below "5" were operable. In re Armbruster, 185 USPQ 152 (CCPA 1975).


In the Angstadt decision, involving a method of oxidizing hydrocarbons employing improved catalysts, the issue was whether the claims were broader than the enabling disclosure in view of evidence in the specification itself which disclosed that not all of the complexes on which the claims read would produce the desired results. The Board of Appeals held that to determine which catalysts would work would require undue experimentation. The Court held, however, that applicants had disclosed 39 complexes which would work, and the amount of experimentation which would be required to determine other complexes which read on the claims but were not specifically disclosed as workable would not be undue. In re Angstadt, 19O USPQ 214 (CCPA 1976).


However, in a case involving a method of using ultrasonic energy to mend broken bones, the Court held that the mere disclosure of "sufficient" ultrasonic energy to accomplish applicant's purpose without a single specific example was not sufficient to meet the enablement requirements of 35 U.S.C. 112. The court noted that the specification did not provide any guidance in selecting suitable operating parameters, and that one skilled in the art would not be aware of any established criteria or techniques. In re Colianni, 195 USPQ 150 (CCPA 1977).


In re Gunn, 537 F.2d 1123, 190 USPQ 402 (CCPA 1976), discussed above with regard to block diagrams, involved a device for computing the amount of postage and for printing this amount and the zip code on the mail. The examiner rejected the claims under the first paragraph of ¤112 because the disclosure had only one figure of the apparatus which showed only hollow rectangles, and the specification described this apparatus only in terms of the function of the hollow rectangles, with no evidence of how the rectangles could be interconnected, timed or controlled. Applicant submitted patents and affidavit evidence to show the conventionality of the components. However, the patents issued after applicant's filing date and the affidavits did not address what was known at the time the application was filed. Therefore, applicant had not overcome the prima facie case of non-enablement made out by the examiner. In re Gunn, 190 USPQ 402 (CCPA 1976).


In re Howarth - In responding to a rejection under 35 U.S.C. 112, first paragraph, for lack of enablement, applicant submitted copies of patent applications which had been opened for public inspection in Rhodesia, Panama and Luxembourg prior to the filing date and which disclosed the critical preparation of the starting material. In holding that the disclosure was non-enabling the court indicated that the public availability of a source of information may be controlling. When no guidance at all has been given, an applicant must show that anyone skilled in the art would have actually possessed the requisite knowledge or would reasonably be expected to check the source which the applicant relies upon to complete his disclosure and would be able to locate the information with no more than reasonable diligence. In re Howarth, 210 USPQ 689 (CCPA 1931).

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EXAMPLES OF DESCRIPTION REQUIREMENT

http://www.uspto.gov/web/offices/pac/dapp/35usc112.htm#example2


In re Ahlbrecht, 435 F.2d 908, 168 USPQ 293 (CCPA 1971) - In order to comply with 35 U.S.C. 112, first paragraph, the recitation of a broad range must be described in full, clear concise and exact terms. The court held the description of a range "from 3-12" did not describe a claimed range of "from 2-12".


In re Smith, 173 USPQ 679 (CCPA 1972) - Disclosure of a generic class of compounds and one example of a compound within a subgeneric class of compounds was not sufficient description to support claims to the subgeneric class of compounds.


In re Lukach, F.2d, 169 USPQ 795 (CCPA 1971) - Although there was no actual disclosure of molecular weight ratios in the specification, one example had an inherent molecular weight ratio of 2.6. The claims contained a range of molecular weight ratios of 2.0 to 3.0. The inherent single embodiment was not sufficient description to support the claimed range.


In re Welstead, 463 F.2d 1110, 174 USPQ 449 (CCPA 1972) - The description did not support the claims because the specification did not contain a description of the claimed subgenus or descriptions of species thereof amounting, in the aggregate, to a description of the subgenus.


In re Johnson, 194 USPQ 187 (CCPA 1977) - Appellant lost an interference as to species within a generic claim, and thereafter filed an application directed to subgeneric claims which excluded the subject matter of the lost count. The court held that the appellant was entitled to the filing date of the grandparent application because "the specification, having described the whole, necessarily described the part remaining." 194 USPQ at 196. The court distinguished Welstead and Lukach stating that "appellants' grandparent application contains a broad and complete generic disclosure, coupled with extensive examples fully supportive of the limited genus now claimed" and the "grandparent application clearly describes the genus and the two classes of polymer materials excluded therefrom." Id.


In re Blaser, 194 USPQ 122 (CCPA 1977) - The parent specification disclosed that water in an amount up to 1.6 mols must be present to practice the invention, and exemplified the use of 1.2 and 1.5 mols of water. Claims setting forth a range of 0.6 to 1.6 mols of water were not entitled to the filing date of the parent application. "That a person skilled in the art . . . might proceed to run a series of experiments and derive a lower limit of 0.6 mols is not a sufficient indication to that person that 0.6 is described as a parameter of appellants' process." 194 USPQ at 125. However, the parent application did adequately describe claimed ranges of 1.2 to 1.5 and 1.2 to 1.6 mols of water. Furthermore, disclosure of a temperature range of 60°C to 200°C and specific disclosure°f heating to 80°C was sufficient description for a claim containing a range of 80°C to 200°C.


In re Edwards, 196 USPQ 465 (CCPA 1978) - Under circumstances of this case, the Court held that an adequate description of chemical reactions which will inherently produce, as the predominant component, the claimed compound is an adequate description of the compound.


McLaughlin v. Roberts, 197 USPQ 831, 835 (Bd. Pat. Int. 1978) - Roberts' claims required 10-25% propellant. The disclosure specified that the propellant may be present from 10-79% of the product, preferably 40-79%, and more preferably 40-60%; the 25% upper limit of the claimed range was not specifically disclosed. The Board held that one of ordinary skill in the art, given appellant's disclosure, would consider the use of the 10-25% range as a part of the invention (description requirement satisfied); likewise, the disclosure was considered enabling even though the 10-25% was not disclosed as the preferred part of the range and there were no examples of percentages within the lower range because one skilled in the art would be able to practice the invention using compositions having a propellant content within that range.


In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984) - The description requirement of 35 U.S.C. 112 is separate from the enablement requirement of that section. Inquiry into the description requirement is a question of fact. Because the specification and claims of the patent specified that a certain scanning function be in synchronism, generic claims added by a reissue application that eliminated the synchronism requirement did comply with the description requirement. The broadly worded title, customarily broad description of the drawing, and statement of objects of the invention did not indicate that appellants had possession of the generic invention as of the original filing date.

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EXAMPLES OF BEST MODE REQUIREMENT

http://www.uspto.gov/web/offices/pac/dapp/35usc112.htm#exam


Thyssen Plastik Auger KG v. Induplas, Inc., 195 USPQ 534 (D. Puerto Rico, 1977) - When invention is in a process, and the inventors know of particular apparatus which forms the best means known to them for carrying out that process, such apparatus constitutes the best mode. Here, failure to disclose a specific second gear arrangement, instead describing a blank box described as conventional, was held to be a violation of the best mode requirement.


Weil v. Fritz, 202 PQ 447, 451 (CCPA 1979) - Under the circumstances of this case, the mere disclosure of a particular range of concentrations as preferred was sufficient to satisfy the best mode requirement. Although the enumeration of possible problems is not essential "unless such a nondisclosure strikes at the truthfulness of the presumption that the 'mode' described is indeed the 'best' contemplated." (applicants did not disclose the pH sensitivity of a compound used in a method for the inhibition of plant growth).


In re Sherwood, 204 USPQ 537, 544 (CCPA 1980) - In determining the adequacy of a best mode disclosure, "only evidence of concealment (accidental or intentional) is to be considered. That evidence, in order to result in affirmance of a best mode rejection, must tend to show that the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment." Here, the evidence of concealment consisted of the specification's statement that use of a digital computer was the best mode even though only an analog method was described in detail and evidence showing the existence of useable digital computer programs. Even though the inventor had more information in his possession concerning the contemplated best mode than was disclosed (a known computer program), the specification was held to delineate the best mode in a manner sufficient to require only the application of routine skill to produce a workable digital computer program.


Honeywell v. Diamond, 208 USPQ 452 (D.D.C. 1980) - Claimed subject matter was a time controlled thermostat but the application did not disclose the specific quartzmatic motor which was used in a commercial embodiment. The court concluded that failure to disclose the commercial motor did not amount to concealment since similar clock motors were widely available and widely advertised. There was no evidence that the specific Quartzmatic motor was superior except possibly in price.


In re Bundy, 209 USPQ 48, 52 (CCPA 1981) - There was held to be no violation of the best mode requirement where the Solicitor argued that concealment could be inferred from disclosure in specification that each analog is "surprisingly and unexpectedly more useful than one of the corresponding prostaglandins . . . for at least one of the pharmacological purposes." It was argued that appellant must have had test results to substantiate this statement and this data should have been disclosed. The court concluded that no withholding could be inferred from general statements of increased selectivity and narrower spectrum of potency for these novel analogs, conclusions which could be drawn from the elementary pharmacological testing of the analogs.


See MPEP 2165.04 for additional examples of evidence of concealment.


Thyssen Plastik Auger KG v. Induplas, Inc., 195 USPQ 534 (D. Puerto Rico, 1977) - When invention is in a process, and the inventors know of particular apparatus which forms the best means known to them for carrying out that process, such apparatus constitutes the best mode. Here, failure to disclose a specific second gear arrangement, instead describing a blank box described as conventional, was held to be a violation of the best mode requirement.


Weil v. Fritz, 202 PQ 447, 451 (CCPA 1979) - Under the circumstances of this case, the mere disclosure of a particular range of concentrations as preferred was sufficient to satisfy the best mode requirement. Although the enumeration of possible problems is not essential "unless such a nondisclosure strikes at the truthfulness of the presumption that the 'mode' described is indeed the 'best' contemplated." (applicants did not disclose the pH sensitivity of a compound used in a method for the inhibition of plant growth).


In re Sherwood, 204 USPQ 537, 544 (CCPA 1980) - In determining the adequacy of a best mode disclosure, "only evidence of concealment (accidental or intentional) is to be considered. That evidence, in order to result in affirmance of a best mode rejection, must tend to show that the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment." Here, the evidence of concealment consisted of the specification's statement that use of a digital computer was the best mode even though only an analog method was described in detail and evidence showing the existence of useable digital computer programs. Even though the inventor had more information in his possession concerning the contemplated best mode than was disclosed (a known computer program), the specification was held to delineate the best mode in a manner sufficient to require only the application of routine skill to produce a workable digital computer program.


Honeywell v. Diamond, 208 USPQ 452 (D.D.C. 1980) - Claimed subject matter was a time controlled thermostat but the application did not disclose the specific quartzmatic motor which was used in a commercial embodiment. The court concluded that failure to disclose the commercial motor did not amount to concealment since similar clock motors were widely available and widely advertised. There was no evidence that the specific Quartzmatic motor was superior except possibly in price.


In re Bundy, 209 USPQ 48, 52 (CCPA 1981) - There was held to be no violation of the best mode requirement where the Solicitor argued that concealment could be inferred from disclosure in specification that each analog is "surprisingly and unexpectedly more useful than one of the corresponding prostaglandins . . . for at least one of the pharmacological purposes." It was argued that appellant must have had test results to substantiate this statement and this data should have been disclosed. The court concluded that no withholding could be inferred from general statements of increased selectivity and narrower spectrum of potency for these novel analogs, conclusions which could be drawn from the elementary pharmacological testing of the analogs.


See MPEP 2165.04 for additional examples of evidence of concealment.

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