In the intricate landscape of patent prosecution, a pivotal requirement often demands the attention of patent professionals - Written Description Support stipulated under 35 USC Section 112. This mandate, essential to securing robust patent claims, necessitates a clear demonstration that the inventor had possession over the claimed invention. Failing to grasp this rule's nuances can lead to pitfalls, as evidenced by a recent case where an applicant's attempt to blend features from distinct embodiments was met with adversity from both the examiner and the Patent Trial and Appeal Board (PTAB). Appeal 2022-003740, Application 15/085,438.
A fundamental principle of written description support is that the patent application's specification must provide sufficient detail for a person skilled in the art to recognize that the inventor indeed possessed the invention at the time of filing. This principle guards against overly broad claims that might extend beyond the inventor's actual contribution, as well as claims of specific combinations not actually contemplated. The United States Patent and Trademark Office (USPTO) upholds this rule with utmost strictness, reinforcing the need for patent professionals to approach drafting and prosecution with meticulous care.
In the recent case in question, the applicant encountered a setback when seeking to combine features from disparate embodiments within the application. The applicant's reliance on a boilerplate paragraph, suggesting the feasibility of merging components from different examples, was deemed insufficient by the examiner. The subsequent appeal to the PTAB shed light on a critical aspect – mere possibility of combination does not substantiate inventor possession. The Board's decision underscored that the facts of each case, here dominated by the specification itself, must distinctly establish the inventor's grasp over the proposed amalgamation.
The claims in this case were directed to a cleaning system comprising an electromagnetic clutch assembly for a high-pressure pump. Claim 1 is listed below.
1. A cleaning system, comprising:
an engine;
a high-pressure pump;
an electromagnetic clutch assembly selectively coupling the engine to the high-pressure pump such that actuation of the electromagnetic clutch assembly controls a supply of power from the engine to the high-pressure pump;
a controller arranged on the high-pressure pump and configured to engage and disengage the electromagnetic clutch assembly;
at least two remote controls remote from the controller and the high-pressure pump, each of the at least two remote controls configured to communicate an electrical signal to the controller, the electrical signals instructing the controller to engage or disengage the electromagnetic clutch assembly, wherein a first of the at least two remote controls is arranged on a lance, and a second of the at least two remote controls is arranged on one of a foot control, a lance stand, or a cab; and
wherein disengagement of the electromagnetic clutch assembly is configured to shut off water supply to the system while the engine is still running.
As noted above, there was an issue with regard to support in the specification. The Examiner found that the features “at least two remote controls,” a first of which is arranged on a lance and a second of which is arranged on one of a foot control, a lance stand, or a cab, lack support. Specifically, the examiner asserted that the specification did not show possession of a cleaning system comprising at least two remote controls as of the filing date.
The paragraph in the specification relied on by the applicant was [0032], listed below:
Specifically, the Applicant’s appeal brief provided the following argument against the 112 rejection:
The PTAB did not agree. The PTAB swiftly rejected the applicant’s argument:
The rejected claims all require at least two remote controls. Appeal Br. 7–8. However, the paragraphs and examples referenced by Appellant all relate to cleaning systems having only a single remote control. See Spec. ¶¶ 18, 21–27. Appellant has not identified a reversible error in the Examiner’s finding that the original Specification fails to reasonably convey that Appellant had possession of a cleaning system comprising at least two remote controllers in two different locations at the same time.
This case provides several take-aways for both drafting and prosecution.
When drafting, while some boilerplate statements can be helpful, such statements, on their own, however well-intentioned, often fall short in establishing written description support for cross-embodiment combinations. Instead, specificity should be the guiding principle. If a desired combination is to be eligible for claiming, the specification should explicitly enumerate this specific pairing. A clear and unequivocal articulation of how the components synergize can also be indispensable to provide back-up with regard to obviousness issues to boot.
During prosecution, vigilance in making amendments is paramount. Relying solely on a generic boilerplate statement to bolster support for a combination can be a precarious strategy. As the recent case demonstrates, amendments must be accompanied by substantial evidentiary backing within the application. A judicious approach involves referring back to the original specification and highlighting how the claimed combination is rooted in the inventor's possession of the invention. This strengthens the argument and minimizes the risk of being challenged on written description grounds.