Section 112 of the Patent Statute requires a patent specification to contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. One of the objectives of this requirement is to "put the public in possession of what the applicant claims as the invention." MPEP 2163, citing Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1566 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998).
The "possession" requirement has recently received special attention at the USPTO, as it has been reported that Examiner are receiving specialtraining in how to apply the possession requirement more broadly as a ground of rejection. Those handling active prosecution cases have surely seen the rise in these rejections. A particular problem with such rejections is that, much like Alice rejections under Section 101, the rules are nebulous and somewhat difficult to apply. MPEP 2163 summarizes the test as follows:
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.
One shows possession "by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)." MPEP 2163. Seems simple enough, except that much of the relevant case law is in the field of biotechnology and drug compounds (where predictability can be very low) whereas the USPTO is aggressively pursuing rejections across technologies.
Due to the spate of possession rejection, it can be helpful to see how the PTAB is analyzing possession currently. Several recent PTAB decisions are summarized below. In eacb\h case, the possession rejection was reversed, although other grounds of rejection were affirmed.
In ex parte Chun, the invention related to a memory device having NAND flash memory with a recessed source/drain region between a selective gate and an edge word line. The Examiner rejected structural limitations added by the Applicant specifying relative dopant concentrations in different locations of the device. The PTAB's analysis cited Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc):
[T]he hallmark of written description is disclosure. Thus, “possession as shown in the disclosure” is a more complete formulation. Yet whatever the specific articulation, the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.
In this case, the PTAB considered the paucity of evidence cited by both the Examiner and Applicant noting that both parties take opposite views on technical issues, but neither cites any evidence to prove their position. In the end, the PTAB's balance of the evidence and argument weighed in favor of the Applicant, even though this was a "particularlydifficult" case. From this case, one can see the importance of citing evidence in the analysis.
In ex parte Muller, the invention related to scheduling e-meetings in a collaborative computing environment. The examiner rejected an original claim element related to extracting a reference to a remote resource requirements document from a scheduled e-meeting. Applicant noted the claim was in the specification as originally filed and described in the specification as follows:
The invite 130 can include a requirements reference 150 to requirements document 160 of required resources for the invitee. The e-meeting 140 can be scheduled in calendar 120 of the computer 110. Thereafter, before the scheduled date and time of the e-meeting 140, the resources of the computer 110 can be inspected by resource inspector 170 and compared to those of the requirements document 160.
The PTAB confirmed that because the pending claim was the same as the original claim, "we determine a skilled artisan would have recognized that Appellants had possession of the claimed subject matter based on the content of [the] original claim." Further, the PTAB confirmed that a skilled artisan would have understood that the description cited in the specification describe "the extraction of the reference 150 from the invite 130 to permit access to the requirements document 160." From this case, one can see the value in relying on original claim elements as a way to show possession.
In ex parte Cimmeta, the invention related to a method for drying clothing. The Examiner rejected numerous claimed elements with broad assertions of new matter and lack of possession. The PTAB summarized the law this way:
The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to "'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed."' Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en bane) (internal citations omitted). "[T]he test for sufficiency is whether
the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Id. This test "requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art." Id. "Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed. Id. This inquiry is a question of fact. Id. (internal citations omitted).
The examiner had simply asserted that the applicant must show clear and unequivocal support from the original specification. The PTAB found that the examiner did not make a prima facia case because he cited the wrong test and never explained why the cited evidence from the applicant was insufficient.
For those applicants dealing with an onslaught of "possession" rejections, perhaps these examples can help highlight possible approaches for a successful response.