REVERSED
3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Sundel LORIN 101/112(1)/112(2) 37 C.F.R. § 41.50(b)/103(a) ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Utility
The test for utility is whether the application shows that the invention is useful to the public as disclosed. “Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). “When a properly claimed invention meets at least one stated objective, utility under § 101 is clearly shown.” Raytheon Co. v. Roper Corp., 724 F.2d 951, 958-59 (Fed. Cir. 1983).
The test for operability is whether one of ordinary skill in the art would reasonably doubt the asserted utility. As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is reason for one skilled in the art to question the objective truth of the statement of utility or its scope. Assuming that sufficient reason to question the statement of utility and its scope does exist, a rejection for lack of utility under § 101 will be proper on that basis; such a rejection can be overcome by suitable proofs indicating that the statement of utility and its scope as found in the specification are true. In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974) (emphasis added).
Definiteness
The test for compliance is whether the claims set out and circumscribe a particular area with a reasonable degree of precision and particularity when read in light of the application disclosure as they would be interpreted by one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Written Description
“What is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). All that is necessary to satisfy the description requirement is to show that one is “in possession” of the invention. The decision in Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997) accurately states the test. One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. (“[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”) (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed. Cir. 1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims . . . . ”), the specification must contain an equivalent description of the claimed subject matter. Lockwood, 107 F.3d at 1572 (emphasis original). Compliance with the written description requirement is a question of fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Stephenson et al GRIMES 103(a) PRICE HENEVELD COOPER DEWITT & LITTON, LLP
AFFIRMED-IN-PART
3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Mindler et al HORNER 112(1)/103(a) MARK G. BOCCHETTI EASTMAN KODAK COMPANY
Written Description
The fundamental factual inquiry in determining whether a claimed invention satisfies the written description requirement of 35 U.S.C. § 112, first paragraph, is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The claimed subject matter need not be described in haec verba in the specification in order for that specification to satisfy the description requirement. In re Smith, 481 F.2d 910, 914 (CCPA 1973). “[T]he written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). In deciding the issue of written description, the specification as a whole must be considered. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989). The PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Mockry et al FREDMAN, WALSH Concurring in part and Dissenting in part 103(a)BANNER & WITCOFF, LTD.
“By using the term ‘consisting essentially of,’ the drafter signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention.” PPG Industries v. Guardian Industries Corp., 156 F.3d 1351, 1354 (Fed. Cir. 1998). To construe the phrase “consisting essentially of,” it is “necessary and proper to determine” the interpretation that the Specification reasonably supports. In re Herz, 537 F.2d 549, 551 (CCPA 1976).
NUIJTEN - AFFIRMED-IN-PART
2100 Computer Architecture and Software
Ex Parte Awe et al SIU 101/102(a)/102(e) IBM CORPORATION
