1700 Chemical & Materials Engineering
Ex Parte Taylor et al NAGUMO 103(a) obvious-type double patenting HAMMER & ASSOCIATES, P.C.
Ex Parte Amshey et al PAK 112(1) LIFE TECHNOLOGIES CORPORATION C/O INTELLEVATE
As our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983):
The test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys
to the artisan that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of literal support
in the specification for the claim language…. The content of the drawings may
also be considered in determining compliance with the written description
requirement. [Citations omitted.]
This test requires that the original disclosure of the application as a whole must be considered. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
2100 Computer Architecture and Software
Recently in Aristocrat Techs. Austrl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008), the court set forth that for a claim to a programmed computer, a particular algorithm may be the corresponding structure under § 112, sixth paragraph:
For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to “the corresponding structure, material, or acts” that perform the function, as required by section 112 paragraph 6. Id. at 1333.
The court went on to point out:
Thus, in a means-plus-function claim “in which the disclosed structure is a
computer, or microprocessor, programmed to carry out an algorithm, the disclosed
structure is not the general purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm.” [WMS Gaming, Inc. v.
Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).]
Id.
The court in [Harris Corp.] characterized the rule of WMS Gaming as follows: “[T]he corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” [Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005).]
Id.
2400 Networking, Mulitplexing, Cable, and Security
Ex Parte Wee et al HUGHES 102(e)/103(a) HEWLETT-PACKARD COMPANY
2800 Semiconductors, Electrical and Optical Systems and Components
Ex Parte Givens KRIVAK 102(e) MARK E. FEJER, GAS TECHNOLOGY INSTITUTE
3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Cronce MOHANTY 102(e) Virtual Law Partners LLP
Ex Parte Batoff MOHANTY 103(a) KNOBLE, YOSHIDA & DUNLEAVY
3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Wagner LEBOVITZ 102(b)/103(a) LITMAN LAW OFFICES, LTD.
AFFIRMED-IN-PART
1600 Biotechnology and Organic Chemistry
Ex Parte Schwinn WALSH 112(1) NIXON & VANDERHYE, PC
When an Applicant claims a class of compounds or materials, the Applicant "must describe that class in order to meet the description requirement of the statute." In re Lukach, 442 F.2d 967, 968 (CCPA 1971). A description of what a material does, rather than of what it is, usually does not suffice. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). Naming a type of material which may or may not exist, in the absence of knowledge as to what that material consists of, is not a description of that material. Id.; accord, Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245, 257-58 (1928) ("the attempt to broaden product claims by describing the product exclusively in terms of its use or function is subject to the same vice as is the attempt to describe a patentable device or machine in terms of its function").
2100 Computer Architecture and Software
Ex Parte Doyle et al BARRY 102(b) CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP
