Thursday, November 29, 2007

Wegner: CAFC continued its misunderstanding in In re Lew

Harold Wegner, on IPFrontline, criticized the CAFC decision in In re Lew as to "written description," continuing the academic assault on the CAFC written description doctrine. Wegner began:

Today in In re Lew, __ Fed Appx. __ (Fed. Cir. 2007)(Gajarsa, J.), the court continued the misunderstanding of 35 USC § 132 “new matter” and its relationship to the 35 USC §112, ¶ 1, “written description” requirement.

The 1952 Patent Act as drafted – and today under 35 USC § 112, ¶ 1 – contains no “written description” requirement, per se. Rather, the “written description” language of the statute refers to the provision of an enabling disclosure – the sole objective disclosure requirement under that paragraph of the patent law.

Because the US Supreme Court has already mentioned written description separately from enablement (a fact noticed by the CAFC), the "train has left the station" on these academics.

Wegner notes the citation to Noelle v. Lederman within In re Lew: In the 1990’s, panels of the court judicially created a “possession” requirement even against original claims, as manifested in the cited Noelle case. One notes, counter to Wegner, Noelle v. Lederman was decided in 2004, not in the 1990's (355 F.3d 1343 (CAFC 2004)) The CAFC also cited In re Wright, which was decided in 1989. The CAFC also cited Chiron v. Genentech, 363 F.3d 1247 (CAFC 2004), the case which was so thoroughly confused by Eli Kintisch in the journal Science.

The issue in the case was replacing the term "ball bearing" by the term "curved member."

See also


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