Patent Law and PolicyUniversity of Oregon Law School

Fall 2009

Elizabeth Tedesco Milesnick

Patent Law and Policy, Fall 2009 Class 5, Slide 1

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.

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Patent Law and Policy, Fall 2009 Class 5, Slide 2

Disclosure and Enablement

• Enablement— Skilled artisan must be able to recreate invention; disclosure must comport with scope of claims.

• Written description– Amended claims must be supported by disclosure.

• Claim definiteness– Claims must be clear to public.

• Best mode— Must disclose best method of practicing invention.

Claimed: “…a fixed console disposed between the pair of reclining seats and with the console and reclining seats together comprising a unitary structure,.. and a pair of control means, one for each reclining seat; mounted on the double reclining seat sofa section…”

Specification “only describes sofas having controls on the console and the object of the invention is to provide a sectional sofa ‘with a console…that accommodates the controls for both the reclining seats.”

Original claim was directed to a sofa comprising “control means located upon the center console...”

The Gentry Gallery, Inc. v. The Berkline Corp. (1998)

Patent Law and Policy, Fall 2009 Class 5, Slide 3

Claimed: An improved wheelchair “…wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof…”

“A decision on whether a claim is invalid under § 112, 2d ¶, requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.”

The phrase “so dimensioned” is as accurate as the subject matter permits, automobiles being of various sizes. As long as those of ordinary skill in the art realized that the dimensions could be easily obtained, § 112, 2d ¶ requires nothing more.

Orthokinetics, Inc. v. Safety Travel Chairs, Inc. (1986)

Patent Law and Policy, Fall 2009 Class 5, Slide 4

Randomex, Inc. v. Scopus Corp. (1988)

Patent Law and Policy, Fall 2009 Class 5, Slide 5

There is no requirement in 35 U.S.C. § 112 that an applicant point out which of his embodiments he considers his best mode; that the disclosure includes the best mode contemplated by the applicant is enough to satisfy the statute.

Trade name disclosure was sufficient where suitable substitutes available.

The invention neither added nor claimed to add anything to the prior art respecting cleaning fluid.

Claim: “The grommet as defined in claim 1 wherein the material forming said base portion has a durometer hardness reading of less than 60 Shore A and the material forming said locking portion has a durometer hardness reading of more than 70 Shore A.”

Specification: “The annular locking portion [ ] of the sealing member [ ] is preferably comprised of a rigid castable material, such as a castable resinous material, either a thermoplastic or thermosetting resin… for example, polyurethane or polyvinyl chloride… Materials having a durometer hardness reading of 70 Shore A or harder are suitable in this regard.”

Chemcast Corp. v. Arco Industries (1990)

Patent Law and Policy, Fall 2009 Class 5, Slide 6

(1) At the time the inventor filed his patent application, did he know of a mode of practicing his claimed invention that he considered to be better than any other?

(2) Is the disclosure adequate to enable one skilled in the art to practice the best mode or has the inventor “concealed” his preferred mode from the “public”?

Enablement & Best Mode Hypotheticals

Patent Law and Policy, Fall 2009 Class 5, Slide 7

If you were to seek a patent on an engine that runs best on ethanol of 99.95% purity, would you need to disclose how to make the fuel with your proprietary (and much cheaper) process when the fuel is otherwise widely available?

What if the fuel is not otherwise available?

Joe invents a new form of gasoline which he decides to exploit as a trade secret. Later Joe invents a new gasoline engine, which he chooses to patent. At the time he files his patent application, Joe knows that his new engine runs best using his own trade-secret protected gasoline blend. Must Joe disclose the formulation of his gasoline blend in his patent application on the engine? Texaco researchers invent a new form of gasoline called Tex-X, which the company decides to exploit as a trade secret. Later other Texaco researchers invent a new gasoline engine, which the company chooses to patent. At the time of filing, these Texaco researchers know that their new engine runs best using the Tex-X gasoline blend. Must the formulation of Tex-X be disclosed in the patent application on the engine?

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, or…

(e) the invention was described in - (1) an application for patent…by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a [PCT application] shall have the effects for the purposes of this subsection of an application filed in the United States; or…

(g)(1) during the course of an interference…, another inventor involved therein establishes…that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

Patent Law and Policy, Fall 2009 Class 5, Slide 8

Conditions for Patentability: Novelty

(f) he did not himself invent the subject matter sought to be patented

Derivation

Claimed: “A mechanical fastening system for forming side closures comprising…a first mechanical fastening means… a second fastening means comprising a second fastening element mechanically engagement with said first element…and disposal means comprising a third mechanical fastening means… engageable with said first fastening element…”

Anticipation under 35 U.S.C. § 102(e) requires that each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference… To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

In re Robertson (1999)

Patent Law and Policy, Fall 2009 Class 5, Slide 9

Claimed: Element 95, produced by a neutronic reactor operated at a relatively high power level (about 200kw) for an extended period of time (approximately 100 days) such as that described in the Fermi patent.

The Fermi patent teaches operating the reactor for 100 days at 500 kilowatts. Would have produced one billionth of a gram that would be undetectable.

In re Seaborg (1964)

Patent Law and Policy, Fall 2009 Class 5, Slide 10

Claimed: ‘233 patent covers loratadine and ‘716 patent, filed more than three years after ‘233 patent issued, covers DCL, the metabolite formed in the patient’s body upon ingestion of loratadine.

“In general, a limitation or the entire invention is inherent and in the public domain if it is the ‘natural result flowing from’ the explicit disclosure of the prior art.”

“[I]f granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. (2003)

Patent Law and Policy, Fall 2009 Class 5, Slide 11