Wednesday, May 15, 2013

112 rejections sustained in Ex parte BOUGHANNAM

In Ex parte BOUGHANNAM , appellant won on 102 but lost on 112, with the bottom line, the appellant lost.

Of "written description"-->

Appellants assert that these claim terms have literal claim support in the
Specification, and thus meet the written description requirement. As stated
by the Federal Circuit, however, “[a]lthough many original claims will
satisfy the written description requirement, certain claims may not.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en
banc), see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336,
1343-46 (Fed. Cir. 2005); Regents of the Univ. of Ca. v. Eli Lilly & Co., 119
F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in
the original disclosure does not satisfy the written description requirement if
it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350;
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002)
(holding that generic claim language appearing in ipsis verbis in the original
specification did not satisfy the written description requirement because it
failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d
1164, 1170 (Fed. Cir. 1993) (rejecting the argument that “only similar
language in the specification or original claims is necessary to satisfy the
written description requirement”).
In addition, original genus claims may fail to describe species. Ariad,
598 F.3d at 1349. In such a case, the claims fail to satisfy the written
description requirement when the specification fails to demonstrate that the
applicant has made a generic invention by showing that the applicant has
invented species sufficient to support a claim to the defined genus. Id. at
1349-50 (“[A]n adequate written description of a claimed genus requires
more than a generic statement of an invention’s boundaries.”) (citing Eli
Lilly, 119 F.3d at 1568).
Here, Appellants have admitted using broad terms such as “service
activation rules,” “obviation condition,” “Web service,” “execution agenda,”
and “marketplace” without setting forth any species to support these genuses
in the Specification. Without such species, Appellants have not shown
sufficient possession of the invention to satisfy the written description
requirement. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.
Cir. 1991).
We sustain this rejection of claims 1-12.

The appellants PREVAILED on their arguments about the 102 rejections, but
because they lost on 112:

As all claims remain rejected under 35 U.S.C. § 112, first paragraph,
the decision of the Examiner to reject claims 1-12 is AFFIRMED.


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