Tuesday, December 11, 2012

Appeal in 95/001,447 [ Citrix v. SSL Services ]

In an appeal of re-exam 95/001,447 [ Citrix v. SSL Services ], there were issues of obviousness.


“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).

As to definitions:

“Although an inventor is indeed free to define the specific terms used to describe his or her invention, this must be done with reasonable clarity, deliberateness, and precision. ‘Where an inventor chooses to be his own lexicographer and to give terms uncommon meanings, he must set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citation omitted).

Of written description:

The written description requirement of 35 U.S.C. § 112, first paragraph, requires that “the disclosure of the application relied upon reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). One shows “possession” by descriptive means such as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is not sufficient for purposes of the written description requirement that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose. Id. “[T]he hallmark of written description is disclosure. . . . [T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”
Ariad, 598 F.3d at 1351. Also, the invention claimed does not have to be described in ipsis verbis to satisfy the written description requirement. Union Oil Co. of California v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). Whether a specification complies with the written description requirement is a question of fact. Ariad, 598 F.3d at 1351.


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