Invalidity of claims of US 6,164,533 upheld by CAFC

In In re Barton Patent 533, the CAFC affirmed the BPAI in re-examination 90/010,064 . This related to an ex parte re-exam request filed on US 6,164,533 . The relevant prior art was US 6,112,191. Apart from the prior art, the examiner rejected over lack of written description.

In the context of the written description rejection, the BPAI cited In re Barker, 559 F.2d 588, 593 (CCPA 1977). The BPAI further noted that limiting a generic claim to a species not disclosed in the specification does not comply with the written description requirement of 35 USC 112 P1, citing Ex parte Ohshiro, 14 USPQ2d 1750 (BPAI 1989). The BPAI illustrated by pointing out that disclosing a car does not provide support for a red car. In the decision, the BPAI found that all 24 claims failed to comply with the written description requirement of 35 USC 112.