Enablement, for 102 and for 112
In a post on SKB v. Apotex in 2005, IPBiz noted:
The CAFC in Rasmusson v. SmithKline quoted BMS v. Ben Venue, 246 F.3d 1368 (CAFC 2001): newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent. The question of whether a reference teaches away is irrelevant in an anticipation analysis, citing to Celeritas v. Rockwell, 150 F.3d 1354 (CAFC 1996).
Separately, the CAFC got into the differences between enablement for claim-supporting disclosures vs. claim anticipating disclosures, citing In re Luckach, 442 F.2d 967 and In re Hafner, 410 F.2d 1403 (CCPA 1969).
***UPDATE: from a board, discussing Rasmusson (Aug 13)
I am really struggling to understand this case. It has always been my understanding that a prophetic disclosure was sufficient to support a claim, so long as it adequately teaches how to make and use, and provides written description, and is correct. The question of whether the disclosure is correct can only be challenged if there is reason to doubt the truth of the assertion, by if the prima facie case is made, applicant can rebut the rejection by submitting the required proof via a 132 Declaration, and I have NEVER before heard of the necessity of that proof being submitted (or, really, the concession to the rejection, just to get the case allowed) causing applicant to lose priority to his ancestor applications (assuming they all supported the claim prophetically as well). Prophetic claims have always been, to my understanding, perfectly fine claims, so long as your prophesy is correct, and I have never heard before of losing priority in a continuation when a 132 Declaration is required. What about In re Langer and In re Marzocchi?
On the differences between claim-anticipating disclosures and for claim-supporting disclosures, see also
The Patent Hawk blog --> There's a gaping double standard of "ordinary skill in the art" between the current enablement regime and prior art invalidity. KSR-empowered obviousness, with its omnificent, creative everyman, allows leaps of technology to damn patentability. In Leapfrog v. Fisher-Price & Mattel, an electronic child learning toy is obvious in view of an ersatz mechanical version lacking claimed features, combined with other technologies necessary to make the old toy seem shiny.
In Sitrick, Joe "KSR" Ordinary would have had no problem adapting the video teaching to movies.
Sitrick and ATI both went to claim scope covering different but equivalent technologies.
Where is the line now drawn for § 112, ¶ 1? What of enablement for the same technology? Is a genus claim invalid for asserting against a different species from that disclosed when the technologies are identical?
At what point does "undue experimentation" take the stage?
See also Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333, 1336 (CAFC 1990) and Vas-Cath, 935 F.2d 1555
Harold Wegner wrote:
The result of Steenbock [In re Steenbock, 83 F.2d 912 (CCPA 1936)] is considered unfair to some. Yet, the law of Steenbock and Ruscetta has been maintained through the years:
“Appellants … contend that ‘there is an inconsistency constituting an inequity in rejecting the claims as fully met by the [applicant’s counterpart] British patent under 35 USC 102[(b)], while at the same time holding that appellants cannot obtain the benefit of the filing date of the U.S. counterpart.’ What they are saying, in terms of the statute, is that if ‘the invention was * * * described’ in the British [counterpart] reference within the meaning of § 102(b), there must have been a ‘description of the invention’ in the corresponding grandparent application within the meaning of the first paragraph of § 112. This argument appears to overlook the law that the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes (see, e.g., In re Ruscetta, 255 F.2d 68 (CCPA 1958)), whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure. See, e.g., In re Ahlbrecht,[435 F.2d 908 (CCPA 1971)]. …. If the law in th[is] situation[ ] really produces inequities, the proper remedy is in Congress.”22
More than thirty years after Ruscetta, the author of that opinion explained the Ruscetta doctrine yet again as the dean of the Federal Circuit:
“[A] subtle distinction [exists] between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....” 23
**
from Ex parte Dunifon -->
We do note
that the C.C.P.A. has recognized a subtle distinction between a written
description adequate to support a claim under §112 and a written description
sufficient to anticipate its subject matter under §102(b).
***
RASMUSSON, 413 F.3d 1318
UPDATE. An issue of "invention vs. enablement" on Patently-O-->
the set-up-->
As you may be aware it was Authur C. Clarke that came up with the "idea" of the comm sat. It turns out that he was gyped out of getting a claim to it by an attorney who told him not to file. Of course he found out later that he should have and it would have made m/billions.
But, as to your question of who should get that claim it seems to me that none of them "should". The one guy came up with something, the comm sat, that wasn't achievable at the time. The first guy to think up FTL travel shouldn't have been allowed a patent on it either because he couldn't make a vehicle to acheive it. Certainly the guy that came up with the amp shouldn't get it. We award inventors not the enablers of inventors so far as I'm aware. Moral to this story is, if you have a grand vision of something to do, either keep a lid on it and achieve it yourself, or be sure that you (or at least POSHITA) would know how to make it.
Though fyi, when Mr. Clarke came up with the idea IRL it was enabled, and would have been fair game for patenting. And in fact others started putting them up shortly thereafter.
Ron Slusky commented on Patently-O on 8 Oct 08-->
"Even if an applicant showed that the prior art reference was not enabled, the applicant's own claim to a satellite with a sufficiently strong amplifier (without more in the claim) may not be fully enabled."
Enablement is not the issue vis-a-vis the augmented claim suggested. A claim that merely adds to the original satellite claim "a sufficiently strong amplifier" is what we used to call "functional at the point of novelty" and would not be allowable, but non-enablement is not the reason. By hypothesis, the disclosure of the sufficiently strong amplifier now makes the original satellite claim supported by an enabling disclosure because the amplifier was the last piece of the technological puzzle. HOWEVER, adding "a sufficiently strong amplifier" to the original claim STILL recites nothing more than a known or obvious OBJECTIVE, since everyone knew that one would want Arthur C. Clarke's satellite to have a sufficiently strong amplifier. That is what is meant by "functional at the point of novelty." The novelty is in the disclosed amplifier, but the claim doesn't say what that novelty is. The claim would have to recite whatever new and non-obvious thing it is that actually makes the amplifier "sufficiently strong." So I agree with the conclusion, but not with the route through which it was arrived.
Ron Slusky
IPBiz--> Of the first remarks, does that mean the guy who writes a structural chemical formula on the blackboard (as happened with the buckyball) is the inventor, and the guy who first makes the compound (eg, buckyball) is not the "inventor"? Don't think so. In chemical cases, the enabler is the inventor. Of course, in the buckyball saga, the first humans to make C60 were from Exxon, and they did not get a Nobel Prize. No one knows who, if anyone, got the patent on C60.
The CAFC in Rasmusson v. SmithKline quoted BMS v. Ben Venue, 246 F.3d 1368 (CAFC 2001): newly discovered results of known processes directed to the same purpose are not patentable because such results are inherent. The question of whether a reference teaches away is irrelevant in an anticipation analysis, citing to Celeritas v. Rockwell, 150 F.3d 1354 (CAFC 1996).
Separately, the CAFC got into the differences between enablement for claim-supporting disclosures vs. claim anticipating disclosures, citing In re Luckach, 442 F.2d 967 and In re Hafner, 410 F.2d 1403 (CCPA 1969).
***UPDATE: from a board, discussing Rasmusson (Aug 13)
I am really struggling to understand this case. It has always been my understanding that a prophetic disclosure was sufficient to support a claim, so long as it adequately teaches how to make and use, and provides written description, and is correct. The question of whether the disclosure is correct can only be challenged if there is reason to doubt the truth of the assertion, by if the prima facie case is made, applicant can rebut the rejection by submitting the required proof via a 132 Declaration, and I have NEVER before heard of the necessity of that proof being submitted (or, really, the concession to the rejection, just to get the case allowed) causing applicant to lose priority to his ancestor applications (assuming they all supported the claim prophetically as well). Prophetic claims have always been, to my understanding, perfectly fine claims, so long as your prophesy is correct, and I have never heard before of losing priority in a continuation when a 132 Declaration is required. What about In re Langer and In re Marzocchi?
On the differences between claim-anticipating disclosures and for claim-supporting disclosures, see also
The Patent Hawk blog --> There's a gaping double standard of "ordinary skill in the art" between the current enablement regime and prior art invalidity. KSR-empowered obviousness, with its omnificent, creative everyman, allows leaps of technology to damn patentability. In Leapfrog v. Fisher-Price & Mattel, an electronic child learning toy is obvious in view of an ersatz mechanical version lacking claimed features, combined with other technologies necessary to make the old toy seem shiny.
In Sitrick, Joe "KSR" Ordinary would have had no problem adapting the video teaching to movies.
Sitrick and ATI both went to claim scope covering different but equivalent technologies.
Where is the line now drawn for § 112, ¶ 1? What of enablement for the same technology? Is a genus claim invalid for asserting against a different species from that disclosed when the technologies are identical?
At what point does "undue experimentation" take the stage?
See also Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333, 1336 (CAFC 1990) and Vas-Cath, 935 F.2d 1555
Harold Wegner wrote:
The result of Steenbock [In re Steenbock, 83 F.2d 912 (CCPA 1936)] is considered unfair to some. Yet, the law of Steenbock and Ruscetta has been maintained through the years:
“Appellants … contend that ‘there is an inconsistency constituting an inequity in rejecting the claims as fully met by the [applicant’s counterpart] British patent under 35 USC 102[(b)], while at the same time holding that appellants cannot obtain the benefit of the filing date of the U.S. counterpart.’ What they are saying, in terms of the statute, is that if ‘the invention was * * * described’ in the British [counterpart] reference within the meaning of § 102(b), there must have been a ‘description of the invention’ in the corresponding grandparent application within the meaning of the first paragraph of § 112. This argument appears to overlook the law that the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes (see, e.g., In re Ruscetta, 255 F.2d 68 (CCPA 1958)), whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure. See, e.g., In re Ahlbrecht,[435 F.2d 908 (CCPA 1971)]. …. If the law in th[is] situation[ ] really produces inequities, the proper remedy is in Congress.”22
More than thirty years after Ruscetta, the author of that opinion explained the Ruscetta doctrine yet again as the dean of the Federal Circuit:
“[A] subtle distinction [exists] between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....” 23
**
from Ex parte Dunifon -->
We do note
that the C.C.P.A. has recognized a subtle distinction between a written
description adequate to support a claim under §112 and a written description
sufficient to anticipate its subject matter under §102(b).
***
RASMUSSON, 413 F.3d 1318
UPDATE. An issue of "invention vs. enablement" on Patently-O-->
the set-up-->
As you may be aware it was Authur C. Clarke that came up with the "idea" of the comm sat. It turns out that he was gyped out of getting a claim to it by an attorney who told him not to file. Of course he found out later that he should have and it would have made m/billions.
But, as to your question of who should get that claim it seems to me that none of them "should". The one guy came up with something, the comm sat, that wasn't achievable at the time. The first guy to think up FTL travel shouldn't have been allowed a patent on it either because he couldn't make a vehicle to acheive it. Certainly the guy that came up with the amp shouldn't get it. We award inventors not the enablers of inventors so far as I'm aware. Moral to this story is, if you have a grand vision of something to do, either keep a lid on it and achieve it yourself, or be sure that you (or at least POSHITA) would know how to make it.
Though fyi, when Mr. Clarke came up with the idea IRL it was enabled, and would have been fair game for patenting. And in fact others started putting them up shortly thereafter.
Ron Slusky commented on Patently-O on 8 Oct 08-->
"Even if an applicant showed that the prior art reference was not enabled, the applicant's own claim to a satellite with a sufficiently strong amplifier (without more in the claim) may not be fully enabled."
Enablement is not the issue vis-a-vis the augmented claim suggested. A claim that merely adds to the original satellite claim "a sufficiently strong amplifier" is what we used to call "functional at the point of novelty" and would not be allowable, but non-enablement is not the reason. By hypothesis, the disclosure of the sufficiently strong amplifier now makes the original satellite claim supported by an enabling disclosure because the amplifier was the last piece of the technological puzzle. HOWEVER, adding "a sufficiently strong amplifier" to the original claim STILL recites nothing more than a known or obvious OBJECTIVE, since everyone knew that one would want Arthur C. Clarke's satellite to have a sufficiently strong amplifier. That is what is meant by "functional at the point of novelty." The novelty is in the disclosed amplifier, but the claim doesn't say what that novelty is. The claim would have to recite whatever new and non-obvious thing it is that actually makes the amplifier "sufficiently strong." So I agree with the conclusion, but not with the route through which it was arrived.
Ron Slusky
IPBiz--> Of the first remarks, does that mean the guy who writes a structural chemical formula on the blackboard (as happened with the buckyball) is the inventor, and the guy who first makes the compound (eg, buckyball) is not the "inventor"? Don't think so. In chemical cases, the enabler is the inventor. Of course, in the buckyball saga, the first humans to make C60 were from Exxon, and they did not get a Nobel Prize. No one knows who, if anyone, got the patent on C60.
posted by Lawrence B. Ebert at 10:57 AM
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