BPAI explains 131 Declarations in LARGAN v. Fujifilm
Where activities disclose one of more embodiments of a single
claimed invention, as opposed to species of a claimed genus, the filing of an affidavit under 37 C.F.R. § 1.131 showing prior completion of a single embodiment is sufficient. In re Fong, 288 F.2d 932, 936 (C.C.P.A. 1961). “Since we disagree with the theory that there are numerous species here and ‘specific’ and ‘generic’ claims, we see no applicability of the cases relating to genus and species situations.” Id.
“To render a later invention unpatentable for obviousness, the prior art must enable a person of ordinary skill in the field to make and use the later invention.” In re Kumar, 418 F.3d 1361, 1369 (Fed. Cir. 2005) (citing Beckman Instruments, Inc., v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) and In re Payne, 606 F.2d 303, 314-15 (CCPA 1979)).
Within the case:
A patent applicant should be able to claim an invention with some breadth, assuming that the claimed breadth is supported by what the inventor has made. For example, if that applicant wishes to recite a “convex lens” as merely a “lens” in a claim, that claim is not improper or indefinite if the applicant has not shown efficacy of the subject matter covered by that claim for every type of lens that could possibly be employed. If a claim is not fully supported, during the prosecution of a patent application, a rejection under 35 U.S.C. § 112, first paragraph, with respect to written description may be appropriate. However, with respect to establishing of prior invention under 37 C.F.R. § 1.131, a showing of a prior completion of a single embodiment is sufficient. Thus, we find that the disclosure of the configuration illustrated in Exhibit A (FF 3) of the Sato Declaration, providing a f1/f ratio value of 1.787, is sufficient to establish that the subject matter of claim 1 of the '191 Patent was within the inventor’s possession prior to the filing date of Yamaguchi.
Calling a broad claim term, in the predicable arts, a genus does not provide greater clarity to the patent process, and would likely needlessly complicate that process. Additionally, the breadth of a claim alone is not a rationale for rejecting such a claim. In re Miller, 441 F.2d 689 (C.C.P.A. 1971). Thus, we find that the disclosure of an aperture in Exhibit A (FF 3) of the Sato Declaration, which would have been understood to be an aperture stop (ACP 8; Resp. Br. 20), is sufficient to establish that the subject matter of claim 1 of the '191 Patent was within the inventor’s possession prior to the filing date of Yamaguchi.
As the Examiner states, reexamination is limited to prior art consisting of patents and printed publications, per 35 U.S.C. §§ 301-302 (ACP 9). Even if the Sato Declaration contained evidence of public use or sale, or the lack of disclosure of best mode, neither we, nor the Examiner, can proffer rejections in this inter partes reexamination over such evidence. Appellant, being the requester in this proceeding, must abide by the rules thereof.
Additionally, Appellant argues that the secondary references, such as Minefuji, would have motivated one of ordinary skill in the art to have modified Yamaguchi to incorporate the claimed f3/f ratio (Supp. App. Br. 23). However, we find Appellant’s point, raised in another portion of their Brief, to be more compelling: “[i]t is well known in the art of optical lens technology that even a slight change in one of the three components will effectively create an entirely different single focus lens” (Supp. App. Br. 14). Given Appellant’s proscription against “slight changes,” we do not find Appellant’s motivation, in view of Minefuji or other references, to be sufficient to overcome such a proscription or to show any likelihood of success. As such, we do not find Appellant’s arguments to be persuasive of err by the Examiner in not adopting rejections of the claims.