Tuesday, May 28, 2013

Appellant loses on written description in Ex parte Gillis

From Ex parte Gillis

As to written description:

“[T]he written description requirement does not demand either
examples or an actual reduction to practice; a constructive reduction to
practice that in a definite way identifies the claimed invention can satisfy the
written description requirement” Ariad Pharmaceuticals, Inc. v. Eli Lilly and
Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010).

“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, … or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement” Id. (citations omitted). (...)

“When no
such description can be found in the specification, the only thing the PTO
can reasonably be expected to do is to point out its nonexistence.” Hyatt v.
Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).

Bottom line: The evidence of record supports the Examiner‟s conclusion that the
term “separate source” represents new matter.


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