Pro se appellant Kiely loses at CAFC

Kiely applied for a U.S. patent with various claims directed to a “comestible kit,” or in other words, a kit for assembling an edible toy. Claim 41 is representative: 41. A comestible kit for the creation of one or more assembly configurations comprising: (a) comprising a torso comprising a processed comestible generally shaped to represent a torso comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit, or (b) comprising an appendage comprising a comestible generally shaped to represent an appendage comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit.

From footnote 2

The examiner also rejected claims 45 and 64 as indefinite because they recite the subjective terms “whimsical” and “silly” without specifying a standard for determining the requisite degree required to satisfy those terms. See App’x 17–18. Similarly, the examiner rejected claims 49, 52, and 54 as indefinite, for improperly invoking § 112(f), because they recite “attachment means” without disclosing any corresponding structure. App’x 18–19. We do not address these issues, as they are moot in light of our opinion today.


Of Markush groups:

We first address the issue of indefiniteness. We conclude that claims 41–54, 56, 57, and 59–64 are unpatentable under § 112(b) because they employ improper Markush language. A proper Markush claim incorporates a closed list of specified alternative limitations. Abbott Lab’ys v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280–81 (Fed. Cir. 2003). A Markush claim that recites a selection from an open list of alternatives—by using, for example, an open-ended transition word like “comprising”—generally violates 35 U.S.C. § 112(b) because such a claim fails to make clear what unlisted alternatives, if any, are intended to be encompassed by the claim. Id.; Manual of Patent Examining Procedure (“MPEP”) §§ 2117, 2173.05(H). Here, each independent claim recites “a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit.”


Claim 41 was poorly drafted:

41. A comestible kit for the creation of one or more assembly configurations comprising: (a) comprising a torso comprising a processed comestible generally shaped to represent a torso comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit, or

(b) comprising an appendage comprising a comestible generally shaped to represent an appendage comprising a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit

And was found anticipated.


Of obviousness


Kiely contends that claim 47 is non-obvious because it depends from claim 41, which the Board did not reject as obvious. Appellant’s Br. 61 (citing In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)); App’x 32. It is generally true that dependent claims are non-obvious under § 103 if the independent claims from which they depend are determined to be non-obvious. See In re Fine, 837 F.2d at 1076. Here, however, claim 41 was determined to be anticipated under § 102. The examiner and the Board did not determine whether claim 47 is non-obvious under § 103 because they did not need to in light of the § 102 finding.

[Query: if a single reference teaches all elements of a dependent claim, can the associated independent claim, with fewer elements, not also be anticipated?]


Note also the December 15, 2015 IPBiz post: Anticipation is not the epitome of obviousness, which includes the text:

This is precisely why our precedent has rejected reliance on the "legal homily" that "anticipation is the epitome of obviousness." Mendenhall, 5 F.3d at 1563. We have expressly upheld a jury verdict of anticipation under § 102(b), even when the same jury found the patent nonobvious under § 103. Id. Though the dissent argues that a "long line of precedent" supports its argument that every anticipated claim is obvious, not a single one of the cases it cites actually holds that the "epitome" maxim precludes a jury from finding a patent invalid under § 102, simply because it is nonobvious under § 103.


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Blawgspot: 8 June 2022