Selected patent law 3-29-2017
Whether a specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact. Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997) citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
“Although the applicant does not have to describe exactly the subject matter claimed, the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
Non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (cited with approval in KSR, 550 U.S. at 418).
“Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)).
A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Clay, 966 F.2d at 659.
For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152– 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–16 (2007).
Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1507 (Fed. Cir. 2008): “[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.Cir.2000). That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one.” [Id.] The subsequent use of definite articles “the” or “said” in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning. An exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the [S]pecification, or the prosecution history necessitate a departure from the rule.
“Although the applicant does not have to describe exactly the subject matter claimed, the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
Non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” (cited with approval in KSR, 550 U.S. at 418).
“Whether a reference in the prior art is ‘analogous’ is a fact question.” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987)).
A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Clay, 966 F.2d at 659.
For over a half century, the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions ... obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152– 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415–16 (2007).
Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1507 (Fed. Cir. 2008): “[t]his court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed.Cir.2000). That “a” or “an” can mean “one or more” is best described as a rule, rather than merely as a presumption or even a convention. The exceptions to this rule are extremely limited: a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one.” [Id.] The subsequent use of definite articles “the” or “said” in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning. An exception to the general rule that “a” or “an” means more than one only arises where the language of the claims themselves, the [S]pecification, or the prosecution history necessitate a departure from the rule.
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