Intellectual Ventures people lose at CAFC
Appellants W. Daniel Hillis, Roderick A. Hyde, Na- than P. Myhrvold, Clarence T. Tegreene, and Lowell L. Wood, Jr. (collectively “Hillis”) appeal a decision of the Board of Patent Appeals and Interferences (“Board”), rejecting all pending claims in U.S. Patent Application No. 11/386,211 (“the ’211 application”) for lack of enablement under 35 U.S.C. § 112. Ex parte Hillis (“’211 Board Decision”), No. 2010-000974, 2010 WL 3827101 (B.P.A.I. Sept. 29, 2010). Hillis also appeals a Board decision rejecting all pending claims in U.S. Patent Application No. 11/386,227 (“the ’227 application”) on the same grounds. Ex parte Hillis (“’227 Board Decision”), No. 2009-014972, 2010 WL 3827097 (B.P.A.I. Sept. 29, 2010). This opinion resolves both appeals. We affirm as to both.
Of the enablement issue, the CAFC noted
Like the examiner, the Board found that the ’211 specification “contains a ‘well-written summary of college level optical physics courses and includes many of the basic equations and physical parameters taught in any electrical or optical engineering curriculum,’” but ultimately failed to make “a connection between the discussed theory and the structure recited in the pending claims that would enable the person having ordinary skill in the art to practice the invention.”
Of the dispute
Hillis argues that, under In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971), the specifications presumptively comply with section 112’s enablement requirement, and that the examiner and the Board did not accept the truth or accuracy of the respective disclosures without stating sufficient reasons for doing so. Hillis’s reliance on Marzocchi, however, is misplaced. Marzocchi states that a “disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defin- ing the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein.” Id. (emphasis omitted); see also Manual of Patent Examination Procedure (“MPEP”) § 2164.04 (8th ed., rev. 6, Sept. 2007). Here, the enablement rejections are based upon the lack of information “teaching . . . the manner and process of making and using the invention,” not a determination on the truthfulness of information that was disclosed. The rule of Marzocchi is simply irrelevant to the examiner’s and the Board’s enablement rejections.
Thus, Hillis argues, when combined with the teachings of the prior art, the ’211 application enables the entirety of claim 1. “Although knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.” Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007). In other words, “[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). Here, even considering the knowl- edge of a skilled artisan, the specification does not enable.
The Wands factors were discussed:
As the MPEP states, “it is not necessary to discuss each [Wands] factor in the . . . enablement rejec- tion.” MPEP § 2164.04. Rather, the rejection “should focus on those factors, reasons, and evidence that lead [to] the [conclusion] that the specification fails to teach how to make and use the claimed invention without undue experimentation.” Id. (emphasis omitted). Although the examiner did not specifically cite the Wands factors, and the Board did not expressly identify the factors upon which it relied, it is evident that both the examiner’s analysis and the Board’s analysis were based on the factors most relevant to this case, that is, the lack of “direction or guidance presented” by the inventor, and the “absence of working examples” sufficient to connect the discussed theory to the recited claims. Wands, 858 F.2d at 737.
The concept of a prima facie case of enablement arose:
Hillis also argues that examiner failed to make a prima facie case for a lack of enablement. We have re- cently explained that the PTO meets its initial burden of setting forth a prima facie case by “adequately ex- plain[ing] the shortcomings it perceives so that the appli- cant is properly notified and able to respond.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in origi- nal) (internal quotation marks omitted). For an enable- ment rejection, the PTO must “set forth a reasonable explanation as to why it believes that the scope of protec- tion provided by that claim is not adequately enabled by the description of the invention.” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993); see also MPEP § 2164.04. Here, the examiner’s rejections plainly indicated that more information on how to implement the invention was needed in order to close the gap between the “summary of college level optical physics” and the “broad reference to