Ariad v. Lilly Amici Briefs

NYIPLA Amicus Brief.pdf: Supporting a strong written description requirement: "By the time of the O'Reilly v. Morse decision in 1853, 56 U.S. (15 How.) 62, it was understood that attempting to dominate an entire field by generic functional claiming was prohibited when the applicant had invented and disclosed only limited techniques or apparatus to carry out such function. Though phrased differently, this doctrine has continuing vitality and is today most closely embodied in the requirement that the specification enable the full scope of the claimed invention."

Professors Janis & Holbrook.pdf: Section 112 does not support a separate written description requirement – not even one limited to the context of new matter.

Morris.DOC: The text of Section 112 does not create a separate written description requirement. Professor Morris suggests giving teeth to Section 112p2 in requiring the applicant to "particularly point[] out and distinctly claim[] what he regarded as his invention."

Novozymes.pdf: WD should be limited to new matter issues.

Holman in Support of Neither Party.PDF: The genus and species possession requirements unjustifiably discriminate against biotech inventions by creating a technology-focused super-enablement requirement. [Read Prof. Holman's Biotech IP Blog where he is following the case.]

University of California (and other major patent-holding universities): The requirements prejudice university researchers who "often make the most important basic science discoveries. . . . As a result [of the written description requirement], university researchers are denied the recognition and reward of inventorship due solely to lack of a available resources rather than lack of inventive contribution."

54 thoughts on “Ariad v. Lilly Amici Briefs

  1. 54

    MD: “But as the 2 year period is set by the dates on letters issued by the EPO on individual cases, it will not be possible to discern any other spikes.”

    The number of divisionals filed by applicants will increase, because of the c.y.a. issues, and the increase will be detectable and obvious.

    “Malcolm, if you find one molecule that works, amongst all the variations disclosed in an earlier filing, well then you can patent it over the earlier, even after publication of the earlier, can’t you?”

    The point is that many of the variations work but some invariably work better than others, or have certain properties that are clinically desirable, and it’s not often the case that the preferred variant — or all of the preferred variants — can be determined in that time frame.

    “The new EPO Rule has attracted deep acrimony from practitioners.”

    It’s a pain in the axx, and it’s not the only new rule that’s comes off as harsh and annoying.

  2. 53

    Much filing activity is indeed expected, just before the end of the transitional period in October 2010. But as the 2 year period is set by the dates on letters issued by the EPO on individual cases, it will not be possible to discern any other spikes.

    The new EPO Rule has attracted deep acrimony from practitioners. It remains to be seen, how much practical trouble it causes the EPO. The Rules have already caused huge irritation within the ranks of prosecutors, because merely to compute the new cut-off dates for filing any divisional is such a pain. They didn’t have to make it so complicated.

    Malcolm, if you find one molecule that works, amongst all the variations disclosed in an earlier filing, well then you can patent it over the earlier, even after publication of the earlier, can’t you? We can’t freeze prosecution of the earlier, can we, until all the results are in, from all the clinical trials on all the variations?

  3. 52

    MD: “Nothing wrong with late claiming in Europe.”

    MM:So if I file an application with 100 nucleotide sequences, each of which is considered a separate invention, and I prosecute one of them to allowance 3 years after filing, I can then file a divisional or continuation to pursue the next one?”

    MD: Malcolm, biotech is not my field, so others may like to answer, but if there is a blatant mischief by biotech drafters here then I suppose it was this which prompted the EPO AC to re-write Rule 36 to cap off the period within which divisionals can be filed at the EPO.
    ————————————–

    MD, there was no “blatant mischief” that I’m aware of. Polynucleic acids and proteins are “complex chemicals” albeit chemicals with certain defined and well-understood properties. Applicants typically try to capture certain variations and anticipate which of the novel, inventive and useful molecules will be the *most* useful but two years is a short time frame in many cases to make that determination (e.g., clinical trials take longer). The unintended result (?) here may be a dramatic spike in cover-your-axx divisional filings at the two year deadline.

    Not the end of the world, but irritating. And it smells an awful lot like one of the rules that the USPTO just deep-sixed.

  4. 51

    MM writes:

    “MD: “Nothing wrong with late claiming in Europe.”

    So if I file an application with 100 nucleotide sequences, each of which is considered a separate invention, and I prosecute one of them to allowance 3 years after filing, I can then file a divisional or continuation to pursue the next one?”

    Malcolm, biotech is not my field, so others may like to answer, but if there is a blatant mischief by biotech drafters here then I suppose it was this which prompted the EPO AC to re-write Rule 36 to cap off the period within which divisionals can be filed at the EPO. (I was wondering what could have irritated the AC so much.)

    Continuations don’t exist at the EPO (or anywhere else in the world except at the USPTO, as far as I am aware).

  5. 50

    @Huh?,

    The short answer is no, there is no principled way to have a different s. 112, p. 1 standard in s. 120 and s. 112. Judge Bryson agrees with you. Moba v. Diamond Automation, 325 F.3d 1306, 1327-28 (Bryson, J., concurring).

    Profs. Janis and Holbrook point this out at pp. 14-15 of their amicus brief. But they are professors who can be, well, professorial and not worry about losing the case. Even if they’re right as a matter of statutory interpretation, antagonizing the court may not be very persuasive in the end. Their radical revision may be difficult for the court to accept.

    I think that Ariad and the other amicus argue that there is a written description requirement, but one that is limited to priority and new matter issues, because (1) it is probably a good idea (and would have developed under s. 120 and s. 132 anyway), and (2) it throws the Fed. Cir. a lifeline to save face.

  6. 49

    6, the logic games take a lot of practice. I doubt you will have time to really do them on the test in precisely the way they teach you to do them. But, if you are like me, I think you will find that you develop an instinct for them just by practicing them, to the point that you immediately know the most likely answer.

    After about 6 practice tests, it got to the point I could just speed through an entire set of them without writing anything down, make immediate guesses, and only miss 1 or 2 of them. I think I was missing 6 or 8 at first, partly because I was running out of time. By going over the ones I missed, and learning time management for that section, I improved greatly.

  7. 48

    The question was raised, “Do the originally filed claims fulfill the original written description requirement, leaving only the question of enablement?”

    I believe yes.

    As Judge Rich noted, the “written description” requirement primarily relates to later filed claims and new matter — including the question of support in parent applications. This was the fact pattern in Muncie Gear — and it might be inappropriate to extend it to originally filed claims.

  8. 47

    “I laugh in the face of essays.”

    Having read your posts on this site, and others, I agree. I laugh in the face of your essays too.

  9. 46

    “Arti K. Rai Sworn-in as Administrator for External Affairs
    Ms. Arti K. Rai was sworn-in as Administrator for External Affairs at the USPTO on Monday, October 19. USPTO Director David Kappos administered the oath.

    The Office of External Affairs consists of the Office of Intellectual Property and Enforcement (OIPPE) and the Office of Governmental Affairs (OGA). Those offices will report to Ms. Rai.

    As Administrator for External Affairs, Ms. Rai serves as a policy adviser to the Under Secretary of Commerce for Intellectual Property and oversees the office’s work with Congress on major legislation to reform current patent law and practice, coordination of informational and educational events on piracy and counterfeiting, and implementation of international intellectual property treaties. She is responsible for working with foreign governments to develop and improve their intellectual property laws and systems, and advising the Department of State and the United States Trade Representative (USTR) on drafting, reviewing and negotiating of intellectual property sections in bilateral and multilateral investment treaties and trade agreements as well as advising the USTR on intellectual property issues in the World Trade Organization (WTO).

    “I’m very pleased to have Arti join our senior leadership team and I feel confident that her expertise will serve the agency extremely well in this position,” said Kappos. “Her work and studies in the field of intellectual property law will be invaluable in both the legislative arena and the global IP stage as we work toward achieving strong and balanced IP protections for rights holders.”

    Ms. Rai is an authority in patent law, administrative law, law and the biopharmaceutical industry, and health care regulation. Rai has served as a peer reviewer for Science, Research Policy, the Journal of Legal Studies, various National Academy of Sciences reports on intellectual property, and various NIH study sections. She has also testified before the U.S. Senate on innovation policy issues. Rai is currently the chair of the Intellectual Property Committee of the Administrative Law Section of the American Bar Association.

    Prior to entering academia, Rai clerked for the Honorable Marilyn Hall Patel of the U.S. District Court for the Northern District of California; was a litigation associate at Jenner & Block (doing patent litigation as well as other litigation); and was a litigator at the Federal Programs Branch of the U.S. Department of Justice’s Civil Division.

    Rai graduated from Harvard College, magna cum laude, with a B.A. in biochemistry and history (history and science), attended Harvard Medical School for the 1987-1988 academic year, and received her J.D., cum laude, from Harvard Law School in 1991.

    HELLOOOOOOO MS RAI!!!!!!!!!!!!!!!!!!

    I think all your chiding NAL about being a troll spurred her into actually becoming one for real. Simply making sht up that she doesn’t care about one way or the other just to provoke a response.

    Oh and f the “logic games” on the LSAT. They’re the only thing standing between me and GW or GM lawlschool. Well, that and a couple of essays, hah. I laugh in the face of essays.

    Mark my words logic games. I’m on your trail and you’re going DOWN.

  10. 45

    NAL: “Right or wrong, the thought pattern is that the applicant may not know exactly what in his application constitutes an invention.”

    Backasswards, NAL, as 6 pointed out. You can’t invent what you haven’t conceived, and at least in the so-called unpredictable arts, you can’t conceive (as a fixed and permanent idea) what you haven’t reduced to practice. If you reduced anything to practice, then you better describe it your application because there is a good chance that the examiner or the courts will decide that the reduced embodiment (and only the reduced embodiment) is the claim that you are entitled to, i.e., “your patent-worthy invention.”

    A correct statement would be: “the applicant may not know what exactly in his application constitutes a PATENT-WORTHY CLAIM.” That statement, while correct, is also trivial and uninteresting. It is equivalent to your statement that “The applicant BELIEVES he has invented something.” So what? Legally irrelevant, unless one wants to challenge a filing as frivolous or a declaration of inventorship as fraudulent.

  11. 44

    Ned: “Another way to look at this is to ask the question: Were the claim to be amended into the specification, would it comprise new matter? If yes, then the claim is unsupported by an adequate written description. Again, enablement is simply not an issue.”

    It depends on how one defines and applies the “enablement” requirement. And that’s really the bottom line here. It doesn’t matter if the so-called “written description” requirement is “separate” or even it’s called “written description”. That’s a red herring.

    What matters is whether applicants are going to be allowed to amend claims to recite inventions which they have not described essentially verbatim. Biotech applicants have been living with the burden for years and you know what? It can be hard work sometimes but it forces applicants (and their attorneys) to think about something besides their desire to claim the entire universe. And more importantly, it prevents applicants from claiming every conceivable future-developed composition or method flowing from a “discovery” or “realization”. I believe that 101 (and its utility requirement, which dovetails with enablement) can also be used for this purpose. No biggie to me, but we know that some people tend to get their underwear knotted up by these decisions.

    There is no chance in hell that the CAFC or the Supremes are going to start allowing Rochester-style claims again. We can take guesses as to how they are going to get the right result, but there is no question about which is the right result, which is why the wheel-spinning of the “textual analysts” here comes across so clownlike.

  12. 43

    “Try to argue the law. ”

    There is no need to argue that which is well settled. And it is well settled on my side of the argument. It is so well settled that Lilly could simply write “follow the law” as their entire brief and win easily.

    Of course they won’t though because Lilly’s lawyers will want to put on a grand ol’ show. And I’m glad, because I’ll be loling the whole time.

    “it is firmly established that the word of law is what it is – ”

    Actually case after case refutes that point.

    “Right or wrong, the thought pattern is that the applicant may not know exactly what in his application constitutes an invention. The applicant BELIEVES he has invented something, but it is up to the examiner to deliniate what is allowable versus what is not. It is a given that the applicant will NOT know how the examiner will understand the claims (and if bothered to even be read – the specification).”

    If that were true, even in the slightest bit, then there would be no need for initial claims what so ever. Submit a spec and I’ll tell you what is allowable and you can take my word for it.

    Your position is beyond ridiculous. It is routine for Courts to acknowledge that the applicant is in the best position to know what his invention is. For right or wrong, that is the “thought process” spouted time and again by the courts.

  13. 42

    MD: “Nothing wrong with late claiming in Europe.”

    So if I file an application with 100 nucleotide sequences, each of which is considered a separate invention, and I prosecute one of them to allowance 3 years after filing, I can then file a divisional or continuation to pursue the next one?

  14. 41

    Huh raises an interesting point. If I understand it right, the provisions of 35 USC 112 “written description” might impinge differently on A, B and C, who:

    -all file the same disclosure on the same X, and

    -all end up with an issued US patent that declares date X as priority, yet, on date X:

    A files pro

    B files in a Paris Convention country, and

    C files non-pro at the USPTO.

    Or do I understand it wrong, and all of A,B,C are equal under 35 USC 112.

    In other words, is the same degree of “written description of the invention” needed, before priority can be recognised as valid, under i) 119 and ii) 120?

  15. 40

    Readers just another clarification, if I may.

    Nothing wrong with late claiming in Europe.

    What is forbidden is to add to the app, during prosecution ie after filing the app, any matter that was not clearly and unambiguously derivable by the PHOSITA from the reservoir of disclosure in the app as filed.

    The comparison is betweeen the technical teaching the PHOSITA derives from the app as amended and that derivable from the app as filed. It’s a disclosure thing, not a claiming thing.

    So, it’s not so very different from the USA, is it? It is just that Europe has one idea of what performance it is reasonable to expect from a drafter, and the USA another. This is not law written in stone, that is immutable over generations. If the courts (in Europe, the USA, or both) want, they can change it, without any need to re-write the respective Statute. It’s a public policy thing, to strike the right balance betweeen “fair” protection for inventors and “reasonable legal certainty for the public, just as it says, in the Protocol on the Interpretation of Article 69 of the EPC.

  16. 39

    The UC arguments seek to distinguish between 112 first para as applied under 120 for priority, and as applied under 112. 120 starts out “An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed …”
    Why would the first paragraph impose a different requirment in 120 than it does in 112?Is there an argument reconciling this?

  17. 38

    NAL: just making a point. The problem we are having is that the statute wasn’t thought out well in relation to how patent applications are actually prosecuted.

    There is a problem that is driving all this. This isn’t Moore or the like merely wanting to make patents weaker to pay for their appointment. This one actual goes to a real problem.

  18. 36

    Ned,

    We can agree (with MaxDrie’s acknowledgment) that US law (and thus prosecution) is definitely different than European law on a number of fronts. This is what it is – conflate the two at your own peril.

    Part of the “late claiming” aspect that may muddy the water for the eurocentric folk is the US notion that it is only after two years after a patent issues that matter divulged but not claimed becomes firmly devoted to the public – defintiely NOT on filing. Broadening re-issues are allowed up to that point, specifically to allow applicants to claim that which they had a right to claim. While an application is alive, ALL matter may still be claimed – either in the immediate application or in children applications. Perhaps you can tell me how long late claiming as such has been a part of the US patent system?

    As you might imagine, this can be a critical difference. And not, perhaps, as you see it as a negative.

    On another thread, there is a discussion on submarine patents – this thought ties into that as publication opens the entire book, not just the claims, but all possible support for any claim that can be made from the initial application. Common to both threads is that “invention” can come from anywhere in the application, not just the initial set of claims. This may be difficult to accept, but it is a feature of the US system, a feature that is NOT to be discarded to be merely like ROW.

    This aspect also gives a wedgie to 6, as he has to realize that by LAW, he has to examine a complete application and not merely a claim set.

    The US system employs a generous give and take battle between the applicant and the examiner. Right or wrong, the thought pattern is that the applicant may not know exactly what in his application constitutes an invention. The applicant BELIEVES he has invented something, but it is up to the examiner to deliniate what is allowable versus what is not. It is a given that the applicant will NOT know how the examiner will understand the claims (and if bothered to even be read – the specification).

    The power attributed to the examiner is, in theory, because the examiner is the professional with the most knowledge in the art field (spanning the full range of PHOSITA), while the applicant merely knows his little slice of contribution. To a certain extent, the examiner works with the applicant to define the metes and bounds. This tends to drive the beginning process of overly broad claims as examiners typically will not offer suggestions like – “hey you didn’t claim this, but I noticed in your specification that you could patent X.” Thus, to provide maximum protection to the client, many applications start big and only begrudgingly give up ground.

    Mind you, this isn’t the only game plan, and I actually prefer to start modestly hoping for a clean first shot and then, with the patent on the way, seek additional protection through continuations.

    NWPA,

    Written description may be an uncountable noun, but that does not mean that is equivalent to it NOT being a singular noun. Please also do not fall prey to the errant comma rules and “common sense” style of reading law. Judges won’t (and shouldn’t) go for that – it is firmly established that the word of law is what it is – legislatures have every option of formulating exactly what they want (especially at this level) and adding, subtracting or changing the meaning by subjective comma renditions and tortured grammatical syntax has long been frowned upon.

    You may be falling into the “tortured” renditions that the good professor warns. There is a reason for such warnings.

  19. 35

    Ned, it all boils down to the fact that a claim can describe an invention, and enable any one skilled in the art to make and use an invention, and disclose the best mode.

    So we have these claims sitting there at the end of the specification that count as part of the written description.

    So, there are two simple questions:
    (1) should the claim language count towards satifying 112, 1

    (2) how do we police new matter for new or amended claims.

  20. 34

    NAL, I would suggest that the common after “invention” was intended to enact Muncie Gear — providing a separate and distinct written description requirement for “invention” from a written description of the way of making and using. More on Muncie Gear below.

    NAL, consider this more than common situation: an application is filed disclosing and claiming a range, let us say 1-10. Due to prior art occupying some part of that range, let us say 9, the applicant amends to claim 1-8.

    Now, there is no issue that 1-8 is fully enabled. But there is an issue of whether there is a written description that 1-8 is an invention. This is particularly true in the ordinary case when there are no examples of 8.

    Another way to look at this is to ask the question: Were the claim to be amended into the specification, would it comprise new matter? If yes, then the claim is unsupported by an adequate written description. Again, enablement is simply not an issue.

    The Muncie Gear case is, in part, an example of late claiming disclosed but previously unclaimed subject matter. Had the unclaimed subject matter been originally claimed, it probably would have been subject to a restriction requirement as being directed to a independent and distinct invention. Outside the US, unless originally claimed, such subject matter is deemed dedicated to the public. If originally claimed, one can file divisional applications to it — but in Europe, such divisionals are now required to be filed within two years.

    US practice has been quite liberal in allowing one to late claim previously unclaimed subject matter. An exception is the reissue statute, which allows a reissue only for the “same invention.” Clearly the drafters had something in mind there.

    Perhaps the result of this en banc case will be to restrict the practice of late claiming in some fashion, but I wouldn’t hold my breath. The written description requirement is distinct, but only to the extent that it will not allow claims to subject matter not described as in the “new matter” example given above.

  21. 33

    6: Try to argue the law. There are many good arguments on your side. Just look at the parsing of the statute. Morris has lots of statements that aren’t very strong. For example, the fact that an “a” is in front of “written description” doesn’t mean much as wrtiten description is an uncountable noun. Additionally, the comma after the first of phrase leads one to parse the sentence with three requirements.

    And, there is also a common sense argument that even if a close inspection of the grammar leads to two requirements that clearly the intent was for three requirements.

    You have many good arguments.

  22. 31

    “Could the wording of Section 112, p. 1 be a direct result of that case?”

    Given the direct and clear (when analyzed with proper grammar – and yes 6, that means you lose, again) meaning of that wording, Ned, how do you propose to do this?

    Would your answer be more or less clear than your admonition of overruling an aspect of Muncie Gear, which btw, is NOT a given, but only a presumption of yours?

    A policy looking for a home will indeed need to keep looking. ( a hint is that you return to the pronouncement of the Supreme’s “seems clear that…” in Muncie, After you mention the ’52 act, yet the Supremes were NOT talking about, could not be talking about the ’52 act).

    A misreading of the law, even for a good cause, is still only a misreading of the law.

    What does the law actually say? In plain English? You didn’t answer my question.

  23. 30

    Mr Heller’s contribution in the middle of the night, at 03.50am, persuades me. I hope to see more on this attractive line of reasoning.

  24. 29

    I asked, “So, what of the claims added [in Muncie Gear] after the new matter [was added to the specification] that were directed to previously disclosed but unclaimed subject matter? What was their problem?”

    NAL responded, “Ned – some good questions and a worthwhile follow-up topic, since the policy arguments will meet defeat at the simplicity of what 112 paragraph 1 actually says – where do we find a home for the rules we want?”

    Not so fast. The Supreme Court actually said the problem was that the original specification did not indicate that the features now claimed were regarded as the invention of the applicant.

    Think. The claims were fully supported, but there was no description of these features as regarded being the invention of the applicant. That is a separate written description requirement.

    Muncie Gear: 1942. Section 112, p.1: 1952. Federico and Rich were both quite familiar with Muncie Gear at the time they drafted the ’52 act. They added Section 132, which is consistent with much of Muncie Gear, but not all. Could the wording of Section 112, p. 1 be a direct result of that case?

    Muncie Gear is also consistent with Rushig. The compound claimed in Rushig was enabled, but there was no hint in the specification that the inventor thought that this particular aspect of the disclosed genus of chemicals was their invention.

    It seems clear that the Supreme Court in Muncie Gear thought there was a separate written description requirement.

    Now, it could be that Muncie Gear was an example of the “confoundment” of the requirement of claims and specification that the separation of the prior statute into two separate paragraphs, a first directed to the specification and a second directed to claims, mentioned in Frederico’s commentary. But, if this is true, this would mean that the drafters of the ’52 act intended to overrule this aspect of Muncie Gear. They might have been clearer on this point.

  25. 28

    In the context of harsh EPO practice on prosecution amendments not having direct and unambiguous support in the app as filed, Night Writer states above:

    “In the US we are expected to pull a rabbit out of our hats to get a patent for the applicant.”

    Might be a daft question but could he hazard a guess where those expectations originated? Are those expectations still as strong as ever? If not, what’s damping them down?

  26. 27

    It isn’t harsh compared to what is going to happen to her backside here shortly.

    She’s about twice as much of an as than the worst attorney I’ve had on the phone. So I at least rephrase things for them even if the content remains the same.

  27. 26

    …and then we will get down to business and make the direct and simple interpretation of the law as behooves all courts in the use of judicial economy and efficiency, rendering our decision based strictly on what the Law actually says.

    Although we did chuckle at the trenchant discussion of the policies.

  28. 25

    ” the NYIPLA brief doesn’t even state the questions before the court and is a embarrassing monologue on policy (You know you have a weak case, if you cannot argue on facts or law and turn first to policy).”

    When the parties and other amici have argued precedent and text until blue in the face and to the exclusion of policy arguments, an amicus offering a trenchant discussion of the policies animating the precedent and text is most welcome to this Court.

  29. 24

    I understand and agree with Morris’s parsing of the statute, but I don’t believe a policy question regarding the “hyper enabling” effect of current law will be decided based on this kind of hyper-literal argument.

    The problematic part of the WD requirement comes from reading in a bunch of words about showing possession of the invention at filing that nobody even pretends are part of the statutory language.

  30. 23

    That was a bit harsh 6. Calm down. Do you treat attorneys and agents like that on the phone?

  31. 22

    A wee bit of anger from the chap known as 6 – I guess that’s what happens when you get beat over and over again (I have to guess, as I don’t know what it feels like).

    As for substance, you wouldn’t know what that was, would you 6? But please, keep on bringing your own rope – I enjoy watching you swing from the end of it.

    Ned – some good questions and a worthwhile follow-up topic, since the policy arguments will meet defeat at the simplicity of what 112 paragraph 1 actually says – where do we find a home for the rules we want?

  32. 21

    In the US we are expected to pull a rabbit out of our hats to get a patent for the applicant.

  33. 20

    I have not been in that situation Maxdrei. Nor have I faulted the foreign colleague. Frankly, I find european practice refreshing in that you don’t have to wrack your brains to try to invent something for the applicant to get a patent, but rather you can just let the application die with a clear conscious because you tried everything that was in the application.

  34. 19

    Also, for you scholars out there, help me understand the following:

    In Muncie Gear, a large amount of description was added to the specification, together with claims 12-14. Only two of these latter claims were directed to the matter the Supreme Court stated was not previously described in the specification. Two of the claims were directed to subject matter previously disclosed, but unclaimed. However, all four claims were held invalid.

    Now, if Section 132 were substantive, any patent containing new matter would be invalid. If it is not, only those claims relying on the new matter would be invalid.

    So, what of the claims added after the new matter that were directed to previously disclosed but unclaimed subject matter? What was their problem? What in the 1952 Act overruled Muncie Gear if Section 132 is not to be taken as substantive?

  35. 18

    For purposes of discussion:

    In re Rasmussen, 650 F.2d 1212, 1214-15 (C.C.P.A. 1981).

    “Broadening a claim does not add new matter to the disclosure. Disclosure is that which
    is taught, not that which is claimed . . .. The proper basis for rejection of a claim
    amended to recite elements thought to be without support in the original disclosure,
    therefore, is § 112, first paragraph, not § 132. The latter section prohibits addition of
    new matter to the original disclosure. It is properly employed as a basis for objection
    to amendments to the abstract, specifications, or drawings attempting to add new
    disclosure to that originally presented. Past opinions of this court, in cases in which a
    § 132 claim rejection was reviewed on a § 112 analysis, should not in future be viewed
    as having approved the employment of § 132 as a basis for claim rejection. The
    amended claims involved in those cases should have been rejected under § 112, first
    paragraph. The claim rejections in those cases could then have been explicitly affirmed
    or reversed on direct applications of § 112, rather than on § 112 analyses applied to
    § 132 rejections. Accordingly, such cases are overruled insofar as they approved
    rejection of claims under § 132.”

  36. 17

    You just spent a whole lot of time jac in off there Noise, I hope it made you feel a lot better. Whole lot of bluster, no substance.

    You’re going to be wishing you had some of MM’s lubricious coating material when they hand you my exact arguments back in the decision and you find yourself bent over and $*%#ed.

    And just fyi, even if it is a “tortured” interpretation it’s tha lawl. I might even agree with you that it is tortured, but we have “tortured” interpretations abounding in patent lawl at this very moment. In fact, they are the foundation of it.

  37. 16

    I briefly scanned these five briefs and was surprised to find no mention of Muncie Gear — a case that really brought home the point about new matter and the written description requirement. Section 132 was enacted to embody its holding, but the CCPA held long ago that Section 132 was not a proper basis for “rejecting” a claim to new matter. Section 112, p. 1, was.

    Now, if there is no separate Section 112, p. 1, basis for rejecting a claim directed to new matter, and if Section 132 is merely procedural, what is the statutory basis for invalidating a patent that has claims directed to new matter? (Assume for the sake of this argument that prior art is not an issue and the new matter, had it been filed as a CIP instead, would have been patentable.)

  38. 15

    …difficult
    …easier

    sounds like policy argument to me – and definitely losing argument against what the law actually says.

    In all fairness, I understand where you are coming from. You should take heart in the second paragraph of 112. That’s the paragraph that has teeth (particular and distinct teeth to be cut.

    Please note BigGuy – Ned doesn’t need to be assailed – he recogizes what the Law says and what is merely wishful thinking. Ned’s posts are typically quite thoughtful and well-reasoned. No need to assail, as he is not inane.

  39. 14

    I’ve just devoted 5 minutes to the Ariad Amicus Brief. It mentions the practice of writing claims into an app that are taken from the other case in the interference. I’ve long wondered how this practice squares with the use of 112 to block the introduction of creative claim amendments during ex parte prosecution. In both situations, claim language suddenly appears, that has no counterpart in the app as filed. Now, in an interference, that’s OK. In ordinary ex parte examination on the merits, however, it isn’t. How come?

    NWPA, as to prosecution at the EPO, I get the impression you haven’t yet found yourself in the fatal 123(2)/(3)trap, in an opposition after issue. Claim as issued is invalid because of 123(2) but can’t be cured because of 123(3). Dead patent. And all because the US attorney insisted, against the advice of his EPO counsel, on a particular amendment to the independent claim. In short, it isn’t the EPO Examiner that insists. Rather, it’s your own counsel, to save you from yourself and to save your client from getting in Europe a patent worth zilch.

    Malpractice, anybody?

  40. 13

    NAL:

    >>The original claims ARE a part of the >>specification.

    I know they are. I think an invention should be described in the detailed description, if for no other reason that claims are difficult for the public to read. And it would be easier for the examiner to police new matter if a claimed invention must be described in the detailed description.

    >>The question before justice is amazingly >>simple and that’s where the battle has been >>won.

    I agree that there is not really support for a written description requirement in the statute.

  41. 12

    NWPA,

    “The only question is whether or not the original claims should also be described in the detailed description. I think the answer is a definite yes.”

    You alluded to this in your first post: The original claims ARE a part of the specification. It appears that you want what you already have – at least for the original claim set.

    As you say – amendments are a different animal and yes, the examiner must watch out for “new matter”. However, that’s where those who prefer the policy argument stumble. As I have posted before, misreading the law, even for adding a good point, is still misreading the law. The question before justice is amazingly simple and that’s where the battle has been won.

  42. 11

    And, frankly, from what I’ve seen of claims asserted in litigation, many of the inventions claimed are simply not described in the written description. The patent attorney comes along after the first office action and claims a new invention.

    I think actually that this is one of the great differences between EPO practice and US practice. From what little EPO work I’ve done, the examiner doesn’t allow creative claiming. The examiner pretty much wants the invention as claimed in an amendment to be explicitly described. Whereas in the US it is very loose. And it often the examiner will accept piecemeal support and not a description of the combination of elements in a new claim.

    I think that policing new matter is one of the biggest problems in US practice and leads to many patents that should not have been issued.

  43. 10

    Haven’t read the briefs yet, so forgive please, if what follows wastes the time of readers.

    If I understand it right, a prosecution amendment down to an intermediate limitation (somewhere between the originally filed claim 1 and the best mode) that was not recited, verbatim, in the app as filed, is nevertheless not “new” matter because it’s “narrower” than the independent claim first filed and “supported” from within, by the specific description.

    Yet invention can lie, in selecting a narrow range from an earlier disclosed broad range.

    Thus, a prosecution amendment can monopolise a selection invention that was NOT made at the time of filing the app. The claim that issues, however is tested for validity relative to the filing (or prio) date of the app, and NOT the much later date on which the claimed selection invention was made, namely, the day the prosecution amendment was filed.

    That can’t be right, can it? Is this the explanation of the use of 112 to control prosecution amendments to the claims?

  44. 9

    >>I’m not sure I understand you. New matter is >>new matter. If something is added during >>prosecution, there must be a basis provided >>for the amendment in the originally filed >>material. If the amended material has a basis, >>it is not “new matter”. If the amended >>material does not have a basis, it is >>excluded. How does this “in prosecution” >>matter affect the section 112 paragraph 1 >>plain meaning?

    How does one figure out whether or not new claims have a basis? The only way I can think of doing this is to require that the invention claimed is described by the written description. Would one skilled in the art recognize the claimed invention. The only question is whether or not the original claims should also be described in the detailed description. I think the answer is a definite yes.

    Whether or not the statute requires the claimed invention to be described in the written description is debateable. But,I think there should be a written description requirement.

  45. 8

    Holman (paraphrased): “The genus and species possession requirements unjustifiably discriminate against biotech inventions by creating a technology-focused super-enablement requirement.”

    It’s the USPTO that “discriminates”, not the statute. There are plenty of instances where the test could be properly applied to other technologies but the USPTO chooses not to do so. As we’ve seen, certain technology sectors are extraordinarily “testy” when their candy and cookies are taken away.

  46. 7

    6,

    In your phrase “…was what he claimed in either the original claims, or in the original ind’s. Take your pick.”

    On what basis are you seemingly dismissing original dependent claims?

    If, instead you meant to write to take your pick between the original claims and the original specification as the basis for “what he considers to be his invention”, we will have to visit the Law (yet again) about what exactly you have to examine (hint: it’s not just the claims, baby). As the claims are a part of the specification (we should be all clear on that), whatever is in the original application is fair game and the entirety of that application is what is Commanded to be examined.

    I see you have another case of diarrhea – try to clean your arguments before you present them OK? My apologies for everyone having to swim through 6’s verbiage.

    “Doc Morris. 6 of one, half dozen of the other. Restating it so that it isn’t “separate” in your mind doesn’t necessarily change the meat.”

    And in reply to” “Amicus Roberta J. Morris, Esq., Ph.D. respectfully submits that the question whether the single sentence in 35 USC § 112, paragraph 1 (“112p1”) has a separate written description (“WD”) requirement, that is, three rather than two requirements, can and must be answered by reference to the plain words and grammatical structure of that sentence.”

    “Um, nobody ever said that there was a “third” one. There are only two. Let’s be clear. However, a part of the first requirement is what is at issue in the current case.”

    6, Please remind us all what was the question before the court again? Oh yeah,

    “Whether 35 U.S.C. § 112, paragraph 1, contains a written description requirement separate from an enablement requirement?”

    Requirements separate from each other count as separate requirements. “Being a part of” is pure briar patch. The third requirement, best mode, is still present in the paragraph, so let’s be clear – you are wrong again – how do you stand being so wrong so often? – even better, you start lecturing about how to join the conversation appropriately. 6, if you are driving on a one way street and EVERYONE else is going the opposite way, chances are pretty good that it is you that is going the wrong way.

    “…if you guys might happen to beat the gazillion to one odds and win.”

    Gazillion to one that the Justices will look for the most direct answer to the explicit question before them? Oh, how I wish you could actually back that up. We both know you cannot. Tell me again what that explicit question is 6. Tell me the direct answer to this question.

    Regarding your infantile and banal briar patch trick of “Ok, so now you’re making the case for the opposing side…” and “OK, now you just made a great argument for Lilly to continue to be on the winning path. Be clear, the only way Ariad wins is if it ONLY applies to the first OF phrase.” – I care NOT if Ariad or Lilly wins – I care that the Law is applied as it should – as it is plainly written.

    “Now I’m going to be 100% clear with you NAL, I followed this guy’s analysis pretty closely with my own, and we all see the same issue. The issue is where a certain phrase branches out from another. I already noticed this issue awhile back, and what I can tell you is that according to the diagramming method I was applying I’m nearly 100% sure that you cannot have the phrase apply to both of the OF phrases. It can only apply to either the WD as a whole (but not necessarily to both of the phrases, except possibly by inference) or to the 2nd OF phrase.”

    This version is just a little more clear, although both versions are, of course, wrong, as we saw last week when I dismantled the arguments you applied incorrectly, in at least so much as your arguments left a phrase dangling + your own source Wikipedia showed that you were wrong – how soon you forget the beating I gave you.

    Not content to torture Wikipedia, and as the good professor points out, it is only through a tortured reading, can 6’s stance be taken. To wit:
    “Not necessarily. Sometimes you might want someone to describe their world changing invention in terms that are not exactly concise. However, you do want them to be concise when describing how to making and use it.”

    Regarding 8. – “Otherwise, the second OF phrase has make/use twice.” And what would be the big deal with that?”

    6, Focus – focus mind you on the clear reading of the text. You cling to your mistakes like they all-of-a-sudden will stop being wrong. Like Molly will reach under your bed and protect you from the bullies that pick on you.

    NWPA,

    I’m not sure I understand you. New matter is new matter. If something is added during prosecution, there must be a basis provided for the amendment in the originally filed material. If the amended material has a basis, it is not “new matter”. If the amended material does not have a basis, it is excluded. How does this “in prosecution” matter affect the section 112 paragraph 1 plain meaning?

    I will grant you that placing PHOSITA in the statute is potentially difficult. It is true that the PHOSITA is a double edged sword – the more power PHOSITA has, for example to know all prior art, the less is required of an applicant to actually write what is known. In fact, the MPEP directs the applicant NOT to write that which is known. PHOSITA’s power works for the applicant as well as the Office.

  47. 6

    “No. In 35 U.S.C. § 112, paragraph 1, the written description is part of the enablement requirement, not a separate requirement. ”

    Doc Morris. 6 of one, half dozen of the other. Restating it so that it isn’t “separate” in your mind doesn’t necessarily change the meat.

    “Amicus Roberta J. Morris, Esq., Ph.D. respectfully submits that the question whether the single sentence in 35 USC § 112, paragraph 1 (“112p1”) has a separate written description (“WD”) requirement, that is, three rather than two requirements, can and must be answered by reference to the plain words and grammatical structure of that sentence. ”

    Um, nobody ever said that there was a “third” one. There are only two. Let’s be clear. However, a part of the first requirement is what is at issue in the current case.

    We find out later that he is referring to the “best mode” as the second requirement. Ridiculous. We’re not even discussing that. Learn to join the conversation appropriately. Making us have to work to pick up your point doesn’t make your point very clear.

    “3. The phrase WRITTEN DESCRIPTION is followed by two prepositional phrases each beginning with the word OF (lines 3 and 4). This indicates that within the one written description there must be information concerning two things.”

    Ok, so now you’re making the case for the opposing side…

    You guys really have a bad tendency to make a strong case for the opposing side without meaning to.

    “7. The admonition to state everything in FULL, CLEAR, CONCISE and EXACT terms (lines 5-7) must apply to the entire (single) written description. ”

    Actually it doesn’t 🙁

    “It would make no sense to permit the INVENTION to be described in language that was other than “full, clear, concise and exact,” and only require such precision for the description of MAKING AND USING. ”

    Not necessarily. Sometimes you might want someone to describe their world changing invention in terms that are not exactly concise. However, you do want them to be concise when describing how to making and use it. And plus, we’re dealing with lawlmakers here, they aren’t exactly known for making lawls that make any sense. If we had a lawl that made any sense you would for dam sure have a “strong WD requirement” made explicit so that nobody could mistake it not being there. Which is, I predict, exactly what you’ll end up with if you guys might happen to beat the gazillion to one odds and win.

    “The language immediately after lines 5-7, that is, the ENABLEMENT requirement (lines 8-10), cannot then be separately applied only to the MAKING/USING phrase (line 4). ”

    Actually it can. Just because you subjectively believe that something does or does not make any sense is not going to stop the court from applying the longstanding law.

    If you happen to be reading, I appreciate you trying.

    “It must apply to both OF phrases and to the single WRITTEN DESCRIPTION required by the first SHALL.”

    OK, now you just made a great argument for Lilly to continue to be on the winning path.

    Be clear, the only way Ariad wins is if it ONLY applies to the first OF phrase.

    Now I’m going to be 100% clear with you NAL, I followed this guy’s analysis pretty closely with my own, and we all see the same issue. The issue is where a certain phrase branches out from another. I already noticed this issue awhile back, and what I can tell you is that according to the diagramming method I was applying I’m nearly 100% sure that you cannot have the phrase apply to both of the OF phrases. It can only apply to either the WD as a whole (but not necessarily to both of the phrases, except possibly by inference) or to the 2nd OF phrase.

    “8. Both the second OF phrase (line 4) and the AS TO ENABLE phrase (lines 8-11) employ forms of the verbs make and use. This reinforces the conclusion that AS TO ENABLE applies to both OF phrases. Otherwise, the second OF phrase has make/use twice. # ”

    Actually that kind of forces the conclusion that AS TO ENABLE applies to only the second OF phrase… “Otherwise, the second OF phrase has make/use twice.” And what would be the big deal with that?

    Let me rephrase my bottom line re this paper for the comprehension disabled. If you get your way and the line applies to both OF phrases then you still lose because it doesn’t matter what kind of terms you’re required to use to phrase the description of the invention IF YOU DO NOT HAVE A FULL DESCRIPTION OF THE INVENTION WHAT SO EVER.

    Now I’m going to be 100% clear with you NAL, because I know you’re going to have some smarty pants sht to say. I followed this guy’s analysis pretty closely with my own, and we all see the same issue. The issue is where a certain phrase branches out from another. I already noticed this issue awhile back, and what I can tell you is that according to the diagramming method I was applying I’m nearly 100% sure that you cannot have the phrase apply to both of the OF phrases. It can only apply to either the WD as a whole (but not necessarily to both of the phrases, except possibly by inference) or to the 2nd OF phrase.

  48. 5

    “Dr. Morris’s point is a good one. That “what he regarded as his invention” refers back to the written description, so you can’t claim something that isn’t described. ”

    While I would love to agree with that I have to confess that it seems to me like “what he regarded as his invention” was what he claimed in either the original claims, or in the original ind’s. Take your pick.

    “The Lilly brief on-point along with any supporting amicus are yet to come.”

    That’s the polite way of saying: “DEVASTATION!!!!!!!11!!!!!!!!!!!!!!!11!!!!!!!!!111111!!!!! COMING SOON!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!”

  49. 3

    The problem is simple to understand. Putting any one skilled in the art in the statue creates a problem. The claims now can be broader than the disclosure to include what one skilled in the art can make. So, during prosecution the clever people can make new inventions with the claims. The new invention may not have been described in the specification, but the claims can teach one skilled in the art how to make and practice the invention.

    The problem that really is how to police new matter being added during prosecution (if one argues that the initial claims are part of the disclosure.)

    Dr. Morris’s point is a good one. That “what he regarded as his invention” refers back to the written description, so you can’t claim something that isn’t described.

    But, really, there is no for thinking about this too much. The problem is a simple one. You can describe a new invention with claims that would enable one skilled in the art to make and practice the invention. So, how do you stop clever people from adding new matter during prosecution. That is at the heart of the problem.

  50. 2

    In contrast, the NYIPLA brief doesn’t even state the questions before the court and is a embarrassing monologue on policy (You know you have a weak case, if you cannot argue on facts or law and turn first to policy).

  51. 1

    Down a familiar path:

    “[Dr. Morris] has long taught that it is easier to read and to understand complicated text if you reformat it, in a process similar to diagramming a sentence.”

    Pay attention to points 6, and 7 – you may recognize them from previous posts here at the Trainwreck. If certain examiners had done their homework and posted their homework, you would have seen that too.

    Worth repeating:

    “Only by torturing the structure to pluck out a phrase without consideration for the sentence as a whole can a case be made for three requirements.”

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