Patent application drafting pitfalls are many and varied. But failing to spell out certain features that seem obvious and implicit shows up time an again. As a writer, it is unnatural to be repetitive and spend extra words explaining the obvious. We are afraid that someone will read such pedantic sentences and think we are not good at our jobs.
Consider the idea that a packaging invention solves a particular problem related to handling both large and small sized pieces with particular structures and features. After describing those particular aspects, it seems redundant to then state, explicitly, that in an example the packing method includes operating the structures and features on both large and small pieces - that was already stated as being the whole point of the invention. However, if the patent application does not call out, explicitly, such operation, the applicant may be prevented from claiming that specific operation (when needed to distinguish the prior art).
That is exactly what happened in a recent case to P&G (Sn 16/262,969). The invention relates to a process for making a consumer goods product wherein the consumer goods product comprises a container and at least one water-soluble unit dose article housed within the container and wherein the process comprises a step of storing the water-soluble unit dose article on an intermediate line. As an example, the unit dose article includes detergents, etc., for devices such as a dishwasher. Claim 1 on appeal is below (emphasis added as to disputed limitations):
1. A process for making a consumer goods product
wherein the consumer goods product comprises a first container and at least one water-soluble unit dose article housed within the first container, the process comprising the steps of:
a. making the at least one water-soluble unit dose article on at least one manufacturing line, wherein said at least one water-soluble unit dose article comprises at least one water-soluble film enclosing a detergent composition;
b. transferring the at least one water-soluble unit dose article from the at least one manufacturing line onto an intermediate line;
c. transporting the at least one water-soluble unit dose article along the intermediate line;
d. transferring the at least one water-soluble unit dose article from the intermediate line onto a first packing line, wherein the first packing line is one of at least two packing lines, wherein the at least one water-soluble unit dose article is transported along the first packing line and transferred into the first container, wherein the at least two packing lines comprises a second packing line, wherein a second unit dose article is transferred from the intermediate line onto the second packing line, is transported along the second packing line, and is transferred into a second container, wherein the first container is larger than the second container; wherein the at least one water-soluble unit dose article is stored on the intermediate line for between about 1 minute and about 2 months ahead of being transferred from the intermediate line onto the at least one packing line.
As background, the bolded limitation was added to distinguish prior art. As described in the background of the application, an issue with prior approaches was that consumers prefer variability in terms of the size of the container. However, with small containers, the packaging line has lower throughput than with larger containers. The background explained the issue as follows:
... consumers prefer variability in terms of type . . . and size (e.g. large size containers preferred for more frequent washes) of the consumer goods product. For example this depends on the type and volume of space they have at home for storing the consumer goods product. Hence, it is preferred to be able to quickly and easily change the packing line to allow for filling of different types of containers. ... if the packing line is packing small containers, the rate of throughput will be lower than larger containers, as there will be more full containers per time interval when smaller and hence more time used in terms of changing to an empty container. This means, the rate of the manufacturing line may need to be slowed to prevent excess water-soluble unit dose articles from being produced and so ‘clogging’ the line since packing is operating at a slower rate.
The invention addressed this with the particular process in claim 1. The examiner’s combination was missing the container size limitation, and the examiner asserted that such a feature was intended use (feel free to read some previous posts on this blog regarding intended use if you need a refresher). Here, the applicant had a strong position; since claim 1 was a process claim, the container size limitation related to actions in the process, not a mere intended use.
However, the problem for P&G was that the specification never explicitly called out the different sizes of the container in the detailed description. Further, the drawings (which were schematic and not to scale) show the containers as all the “same” size according to the examiner.
The PTAB thus found that the claim failed under Section 112 for lack of written description support. From the decision:
Appellant’s contentions are unpersuasive. The passages quoted by Appellant are found in the “Background of the Invention” section of the Specification. Spec. 1–2. We interpret these passages as providing a description of the art of water-soluble unit dose articles, not a description of Appellant’s claimed process. Id. As for the drawings, we agree with the Examiner that Appellant’s Figure 3, for example, appears to show that the containers 9 on the top, middle, and bottom packing lines 8 are all the same size. Even if the figures are not drawn to scale, we also agree with the Examiner that the container size limitation of claim 1 is “not readily apparent” in the drawings. Ans. 4.
So, even if it may seem verbose to explicitly describe detailed examples illustrating the inventive approach that seem obvious from the disclosure, failing to do so can severely limit amendment options when they are needed most during prosecution.