The PTO has released a new set of Written Description Training Materials that include a series of Seventeen examples of proper written description rejections. According to the accompanying notes, these materials are intended to “supersede and replace the 1999 training materials.”
Because most of the action in written description continues to focus on biochemistry, the bulk of the document is directed toward those issues. However, all practitioners should review the following examples:
- Example 1: Written description in relation to priority claims;
- Example 2: Written description in relation to amended claims;
- Example 3: Written description in relation to flow diagrams;
- Example 15: Written description in relation to a genus with widely varying species; and
- Example 16: Written description in relation to a process claim where the novelty resides in the process step.
Documents:
“If you’re cutting your time and/or your bills then you are in essence agreeing that your client’s valuation of your work is more correct than your own.”
perhaps
… or you just failed to meet your estimate and can’t justify that failure.
… or you’re in essence agreeing that the market’s valuation of patent work generally is lower than yours and you can’t justify the difference.
Sadly, many associates have to deal with partners’ failure to give a proper estimate, and many market participants can’t tell a good patent from a bad one and thus value patent services lower.
Sorry to hear that. I’m not sure what the point is anymore except that writing off time is not something anyone should aspire to know much about.
Cave Man,
I don’t agree with Malcolm too often, but on this one I do.
HR
The Hank Rearden post immediately above seems strangely Mooney-esque
“I thought at one point they were allowing these hybridization sort of claims…”
They did. In fact, the Office appeared to favor them. Then they stopped favoring them. Now they are antagonistic towards them. Their current position is more correct, probably, because from an infringer’s standpoint those sorts of claims really stink.
Ed said re Example 6, claim 3 of the WD materials:
“Do you think the answer here is consistent with EnzoII?
Is the guidance here different than the old guidelines? I thought at one point they were allowing these hybridization sort of claims…”
I think the holding in Enzo was attributable in part to the difficulty the patentees had (and others also had at the time) of cloning this particular type of gene, so that in lieu of a technically unobtainable primary sequence, a deposit would satisfy the written description requirement. With advances in sequencing technology, this is unlikely to ever be true again.
You are right, they were allowing this type of claim for awhile but stopped some time ago; it’s nice to see confirmation of that change here. I think that is the right way to treat these claims, since it would be very difficult for anyone to
quickly determine whether they might be infringing any such claim–you would have to
get each deposit that might be relevant and then run hybridization assays to determine whether your gene fell outside the scope, which seems unduly burdensome particularly when there is a better way to describe the sequence (i.e., the sequence itself).
Incidentally, I have been receiving a rash of Restriction Requirements (of course, “necessitated by Applicants’ amendment”) following the addition of new dependent claims to the case–which I don’t remember ever prompting a Restriction Requirement before. Has anyone else seen this? Is it, perhaps, an attempt to reduce PTO work per claim set/prompt more filings/ increase pendency and backlog? Just kidding–that would never happen.
To law student:
One significant difference between written description and enablement is that enablement requires that one skilled in the art,without undue experimentation, is able to make and use the claimed invention. In contrast,see Martin v. Mayer, 823 F.2d 500, 505 (Fed. Cir. 1987) (holding that the written description requirement is “not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure. . . . Rather, it is a question whether the application necessarily discloses that particular device”), in the written description requirement, just from the specification, one skilled in the art can determine that the applicant has invented the claimed invention.
Biotech question….
Does anyone have any views on the PTO position with respect to Example 6, Claim 3? (Dealing with describing a nucleic acid by hybridization to a described target nucleic acid)
Do you think the answer here is consistent with EnzoII?
Is the guidance here different than the old guidelines? I thought at one point they were allowing these hybridization sort of claims…
“That is true in one sense: if prosecutors lowered their billing rates to match the client’s expectations/fantasies, prosecutors wouldn’t have to write their time off.”
Mooney is correct. If your client is not willing to pay you for what you think your time is worth, then there’s a disconnect. If you’re cutting your time and/or your bills then you are in essence agreeing that your client’s valuation of your work is more correct than your own.
I have prosecuted plenty of apps.
Simpsons – best show on TV. Guess you’re a little bitter since Golden Girls was canceled.
“the Simpsons”
Are they still broadcasting that garbage?
Hank’s right. If you can’t bang out two, three or half a dozen responses in a day, AND write a few more pages of that specification, and bill every second (lower your billing rate!? – pish posh), AND be home in time to watch the Simpsons, you’re doing something wrong…
Nothing sadder than a plodding type who takes half a day just to try to “read” the references.
Apparently Mooney knows a little too much about writing time off…
Hank Reardon says, “They’re doing something wrong.”
That is true in one sense: if prosecutors lowered their billing rates to match the client’s expectations/fantasies, prosecutors wouldn’t have to write their time off.
MM and BJA ae correct. Hank Reardon has clearly never prosecuted patent applications in private practice.
Hank Reardon* is a foremost authority on the practice of patent prosecution.
*Hank Reardon is not and never has been involved in patent prosecution.
“While I do not personally know, based on what I have been told by attorneys (both informally in interviews as well as friends that have left the office for law), the attorney has to actually put in more (sometimes a LOT more) time than they can bill.”
They’re doing something wrong.
“Hank Rearden said “All time is billable.”
Hank Rearden must be a litigator.
Hank Rearden said “All time is billable.”
While I do not personally know, based on what I have been told by attorneys (both informally in interviews as well as friends that have left the office for law), the attorney has to actually put in more (sometimes a LOT more) time than they can bill. Throw in that you need to bill 2100-2200+ hours a year (i.e., MORE than 40 hours a week – 2080 hours is 40 hours a week with no vacation, holiday, etc.). NO thanks. It ain’t worth it.
Of course, if you are a name partner it becomes a lot different & YMMV.
MVS
“This is a significant part of the reason I don’t want to be an attorney. At least here, if you can do a good job & do it right, you don’t have to be working VOT or at nearly midnight on a Sunday (or at least I never did).”
All time is billable. VOT is for s#ckers. And examiners.
“Firstly, it is part of your job to have interviews. If you don’t like it, leave.”
I never said it wasn’t, nor that I don’t. I’d say more but sp am doesn’t want me to.
MVS, thanks for dressing down the boy 🙂
Hey, it’s not VOT for me. I get paid for the time I work and bill. At times, things bunch together and no other time is available finish things on time and make the clients happy.
Oh, “We Have No Choice”, one small point in your post @ 11:48 PM on a Sunday night. You said “I must finish an application tonight”.
This is a significant part of the reason I don’t want to be an attorney. At least here, if you can do a good job & do it right, you don’t have to be working VOT or at nearly midnight on a Sunday (or at least I never did). 🙂
MVS
e#6k,
In YOUR opinion “an interview, to us, is about as important as, oh, I don’t know, a bird you hit on your way in to work.” but many (most?? I hope) do not have this backwards, stick-it-to-the-applicant attitude.
Firstly, it is part of your job to have interviews. If you don’t like it, leave.
Secondly, interviews are a great way to actually get things accomplished & get cases to a disposal if both are willing to listen & compromise/be reasonable. Too often, it seems to be the examiner that is less willing to work things out than the attorney, unfortunately.
Thirdly, if you do blow off an interview, that is either a -5 or -10 on your customer service section of your PAP. You get one of these in a quarter or 2 quarter & it can put your rating for the element into the marginal or unsatisfactory category. And it can be used against you in other areas as well.
Don’t assume that you know it all or speak for the whole office. You speak for yourself & that is it.
MVS
should be: is documented here (in his own words).
This guy e#6k seems unbelievable. However, if he is real, it is good that so much of what is wrong with the PTO documented here (is own words).
So basically you’re complaining because someone didn’t make an appointment. Cry more but stop trying to act like that’s “not following office policy” or something similar. Guess what, sometimes people can’t make it in to work. And an interview, to us, is about as important as, oh, I don’t know, a bird you hit on your way in to work.
“or the examiner may say that it is the policy in his group not to conduct interviews” that implicit flame is what started the discussion, and you tell me to chill. Turn your flames off mr. prosecutorophile.
#6k, I understand most of what you are saying about setting it up properly, but in each of the instances I referred to, I had requested someone with authority in advance. When I arrived at the PTO, a primary was not present and when I asked for one, there was either none available or it was a big hassle and the primary that was located knew nothing about the case.
Please don’t “explain” the system to me. I know more about the internal PTO culture and system than you, more about the system from an outside perspective than you, and more about the patent rules and law than you. This may simply be a result of having worked in this field much longer than you and in different capacities. Nevertheless, it requires a lot of work and dedication. Your constant insults to practitioners here are not taken well – at least with me.
I believe you should take a ritalin chill-pill and listen to what many people here are saying. I must finish an application tonight so I’ve got to go. Good luck, but try to back off and practice a little humility.
“The problems I’ve had involve juniors not having a primary present. You are tight, they will never commit to anything, and I’ve had many primaries give wishy-washy or deceiving verbal indications of understanding.”
I have a whole of 1.5+ years under my belt and even I, when an attorney calls up for a quick discussion of some minor issue, can say, yes, that sounds correct, let me run it by my primary but it’s pretty much the way it is. If it’s true, and not blatantly false then my primary will listen. Sure, I can’t be like “YES, YES, that’s it! You have patentable subject matter here!”. I offer before every “interview” or quick discussion over some insignificant matter that we can schedule in my primary as well, a solid majority of the requestors decline because it’s not necessary and they want to talk sooner, if not immediately (which I usually accomodate, cold case). The ones where it is necessary guess what? We schedule in my primary. Ask them to do this. Oh, and ask them to do it well before the day before your 6 mo. expires. Here’s something else for you to consider, the primary or spe is in fact the one “in charge” of the case as they are the only one that can sign it, whatever the junior says doesn’t matter in the least even if they do go on the record saying x, x doesn’t stand. If you want to talk to primary, ask the junior for their number. Your problems stated here stem from yourself alone, not the office in any way shape form or fact.
MVS, I did not mention anything about the granting of an interview (although I’ve had some bozos improperly deny one – which initially puts things in a very bad way). The problems I’ve had involve juniors not having a primary present. You are tight, they will never commit to anything, and I’ve had many primaries give wishy-washy or deceiving verbal indications of understanding. I know that the majority of these problems are the result of terribly bad management.
I was an examiner all the while Bill Clinton was president. At least there was an atmosphere of giving people a fair shake (I think it was called “customer service”).
As for Obama, it would give me no greater pleasure for him to tell those fools to hit the road. I have heard it from the grapevine Dudas is having difficulties (like Gonzo) finding work out here. At least this part will be a beautiful end to a years-long nightmare.
I am not going to list specific examples, but most of the rule breaking problems occur when dealing with group 2100, group 2600 and the business method group (3600 or 3700?).
One point 6K makes that I would really like to reiterate.
Office policy (which supersedes any AU or TC policy) is to grant interviews IN ACCORDANCE WITH the MPEP. Now, if you have followed MPEP policy and the examiner has denied an interview, let’s hear names!! Better yet, if you have the cojones, give us a SN with the request in the record. If the examiner (or SPE) is doing this, they need to be called out on it. Personally, I don’t think this happens enough.
Otherwise you are making no more than spurious and unfounded allegations, which anyone can do if they don’t have to back it up with evidence.
Now, on the other hand, there are many legitimate reasons to deny an interview. Things like responses already filed, refusal to come in with an itinerary/proposal (or a history of doing so), not being an attorney of record and also not having a reg # (we see this a lot, anymore – some clerk who is doing the case w/o a # tries to come in on their own & interview. MPEP says that is a no-no but the attorney still complains that we won’t give his/her an interview.).
And the boilerplate form paragraph at the end of your response conditionally requesting an interview is not a proper request, so don’t count that either.
As for the remarks made by “We Have No Choice”, 2 points to make.
1 Until an examiner has negotiating authority (I think as a GS 13; maybe 12, but I think 13), they can not agree to anything. So it is proper to have a SPE or primary at the interview and you should request one be present if the examiner does not have negotiating authority. That is by the book.
2 Why does everyone here think that a change of administration to a dem. will make things any better? Historically, the patent system has been worse off under the dems. And many of the problems we have now have their seeds at least as far back as Clinton.
Now, “coast”, “poor inventor”, “We Have No Choice”, etc. we are waiting for specifics instead of allegations…
MVS
Whose ever name you’re going to tell us. Apparently you don’t believe that they follow proper procedure here at the office.
e#6k,
who have I “potentially defamed”?
You’re right No Choice, directors don’t get involved in interviews that I know of, but in a matter of this importance, obviously the president himself should step in amirite? Great injustice is being done, illegal actions are being taken on the behalf of the Gov. someone must stop this! Where’s Dudas? Where’s Peggy? Where’s Margaret?
“or the examiner may say that it is the policy in his group not to conduct interviews”
Surely Coast here has a name for us, he wouldn’t just throw out a totally unfounded and potentially defaming comment anonymously on the interwebz amirite? Examiners are public servants feel free to toss out a name.
Oh, making big allegations are we? Maybe you’d like to tell us a little more about your example that you make such a big deal of. At the worst we have someone misinterpreting caselaw, gee, that amounts to a criminal action doesn’t it? More probably though we have you, after having been convinced by some attorney somewhere of a misinterpretation of some caselaw, thinking that the PTO is sooooo horrible. When indeed the rejection is valid, even if the board took pity on you or the examiner wrote a poor Answer. Your bs is a dime a dozen, you’ll fight your way through the board, get your patent, take it to trial and lose horribly. Good work skipper! But no, really, give us more info on this example you have. A case no. perhaps?
Dear Examiner 6K, you should be one of the first ones to go when they finally realize that having a bunch of goons running the patent office doesn’t help anyone. Everytime I talk to an examiner, they all say the same thing – they can’t allow the case, because they are under orders to reject all applications. You guys are a bunch of crooks, anyone that is in a position of authority and tries to rationalize breaking the law because they are somehow smarter than everyone else and are doing it for our own good is too far gone to save.
or the examiner may say that it is the policy in his group not to conduct interviews
6k, I believe Poor Inventor was referring to those in charge, and you certainly are not helping your brethren with your immature statements.
Also, it is very difficult to have an SPE present at an interview, much less a primary examiner. You did make me laugh about a director ever caring to attend an interview. I’ve never heard of such a thing, although I would fully support it. I also believe directors and spe’s should be examining patent applications.
We have no choice. We must to wait until January 2009. I hope President Obama acts quickly and wisely.
Poor inventor, no. 1 you’re requesting our services every time you file an app. If you don’t like our services, you don’t have to apply. Really, nobody is putting you under ANY, even the SMALLEST obligation to apply for any patent. Ever. Never have, never will. Even taking away that on its face consideration, considering your specific case, it seems that you have gotten yourself into a problem. Either “grounds that the structure corresponding to the software MPF limitation is a general purpose processor, not a special purpose processor as required by WMS Gaming.” that is a valid grounds or it’s not. Which is it? I take it that you feel like it isn’t. You feel that way because of one of two reasons. Either you feel that’s a misinterpretation of WMS OR your processor is a special purpose processor. Which one have you been arguing?
I have to wonder how often you people who complain about the office actually sit down and have a rational discussion with the examiner etc. If you’re blatantly in the right, get his spe to sit in next time. If you’re still blatantly in the right, get the director to sit in. Or just telecon them in for like 3 seconds to clarify whatever point it is that you feel the disagreement is about. If the directors think you’re wrong also, then you probably don’t have a very good chance at the board. Just narrow the issue down. I currently have 4 cases that are narrowed down to specific issues, 2 are judgment calls I have to make, and in all fairness I should be conservative about how my judgment goes unless there is something spurring me to get liberal with the allowance all of a sudden. The other 2 the applicant must be blind or is purposefully pretending not to see what is in front of them. To be honest with you, in those two cases I believe the later. Why? Because in the course of my search I found many many ref’s that would indicate that they’ll have ample sue targets should they get that claim allowed. Now, that’s not a problem in and of itself, it’s only a problem when the prior art already shows what they have and I would just be issuing a bad patent that would go to litigation and get invalidated, IMMEDIATELY. I’m guessing they want the patent for intimidation purposes or something.
Why do they even bother? I routinely get rejections under the written description requirement for software means plus function limitations, and even after I go over WMS Gaming and precedent that firmly establishes what is required for such claims in response, examiners maintain rejections and make them final on the grounds that the structure corresponding to the software MPF limitation is a general purpose processor, not a special purpose processor as required by WMS Gaming. When I appeal, they issue a new non-final office action, and in some cases they continue to do that on renewed appeal rather than actually let the BPAI apply controlling Federal Circuit law and reverse their rejection. When they get reversed, they issue a new office action. This so-called “patent office” is nothing but a parasite, full of creeps who must be getting moola from the PRC, Microsoft or some other organization that would benefit from elimination of U.S. patents, as there is no way they can be that clueless and still make their way to work everyday (then again, with the various programs that the so-called patent office offers, maybe they telecommute from their home in their parent’s basement). When is the Federal Circuit going to take over this rogue, captured agency and fire all of the unelected bureaucrats that feed off the public and refuse to follow the law?
“Is there a comprehensive list of the training material so that patent attorneys can review the list and download relevant material?”
Not sure how comprehensive this is but …
link to www1.uspto.gov
And then there are the regular Customer Partnership Meetings which are also accompanied by PowerPoint presentations. For example, in the biotechnology area: link to cabic.com
It would be nice if the USPTO made this information somewhat more accessible (i.e., a clickable link that is easy to locate starting from the USPTO home page) but now you know.
Babel Boy,
Of course you are right. The claim would also have a problem with the scope of treating all cancer. It is hard to establish all of the relevant facts in a hypothetical claim put forth for discussion. The question was about the written description and enablement issues arising from the relationship between the actual data in the spec and a claim to a range. That problem would still be there if the doses had been reported and claimed in mg/kg body weight.
This sort of training material can be useful. At least to understand the viewpoint of the Examiner. Is there a comprehensive list of the training material so that patent attorneys can review the list and download relevant material? While it is good that this blog lets us know of new material, it would be good to look for old material when looking for ways to deal with a particular office action.
MalMoon
Speaking as a pharmacologist, which I almost never do anymore, I’d say your example claim has an enablement flaw. I’ve never seen therapeutic doses or a D/R curve given in percent of the composition. It doesn’t mean anything therapeutically.
Administering the composition over the range 5% to 30% could result in precisely the same dose of X (or ANY dose of X), depending on the total amount of the composition administered.
Experimentally, potency of drugs is typically expressed in units of concentration. But even in whole-body (in vivo) experiments mass of the active ingredient can be derived from known volumes or total mass administered.
I don’t write these kinds of claims, but I hope the practice is to claim some measure of the absolute mass or final concentration of the active ingredient.
Malcom,
I say you are enabled for the range unless I can come up with a reference that says it is unpredictable and the fact that all of the examples worked was just lucky.
WD is trickier. An original claim to the range would not get rejected, because the claim is part of the disclosure. An amendment to dodge a 102 rejection would be new matter, though.
“re beverage example: me thinks the “sweetening means” addition gets the WDR unless examiner training has changed since my days there eons ago, and even though it may be “enabled”. hope you still have time to file the CIP.”
Won’t need it, I’m gonna’ appeal.
“This is simply because of years of the CAFC crucifying patent holders for what seem like merely an unfortunate choice of words.”
That’s what’s going to happen in my second appeal that I just got word of.
Sweetening means Definitely gets the WDR.
“You are not alone in failing to see the difference between written description and enablement. The PTO and the Federal Circuit often conflate the issues. The resulting case law is a murky swamp.”
Indeed, although this does not mean that it is always difficult to distinguish between the two concepts.
In my experience, where things get murky is a case such as the following: Applicant is attempting to claim a method of treating disease by administering a composition comprising X, wherein said composition contains from 5% to 30% X.
Let’s say the application describes the successful use of compositions containing 4.9% X, 12.3% X, 22.1% X and 30.3% X. There is no express recitation of any range per se in the specification or in the initially filed claims.
Is it proper to reject the claim as failing written description, enablement, both, or neither? If there is a proper rejection, how can the claim(s) be rewritten to capture as much scope as possible.
[shotguns an ice cold Tecate and crushes can on forehead]
Happy Friday!
It’s a little more complicated then what I let on, but you might be right. I was just doing what my officemate said to do. It’s a moot point anyway because the claim was cancelled.
Claims as originally filed have been used to provide written description support since about 1980.
2600 examiner,
Based on what you say, it does not sound like a WD rejection was proper (assuming originally filed claims). Based on the way WD is interpreted, the claims provide their own written description. Thus, if the spec. had the same language as the claims, sounds like no WD issue.
There “may” be an enablement issue, based on what you say (missing drawings, poor language, etc.) Then again, maybe just objections would have been sufficient… But NOT a WD issue.
MVS
I’ve only ever made a 112 1st WD rejection once. They had a poorly written claim that had the same terminology as the spec. The spec referenced a figure that they forgot to include in the application.
6K is right.
re beverage example: me thinks the “sweetening means” addition gets the WDR unless examiner training has changed since my days there eons ago, and even though it may be “enabled”. hope you still have time to file the CIP.
Carnac,
I agree that claims are basically a requirement for provisionals, unless the applicant includes a statement like the invention is this. Provionals have to meet the written description requirement and a clear indication of what is intended to be the invention is needed. I usually draft a few claims, from the broadest I believe I might be able to get to the absolute narrowest that I believe would be useful to the client.
I avoid the word invention like the plague and write minimal background sections myself. This is simply because of years of the CAFC crucifying patent holders for what seem like merely an unfortunate choice of words.
Let’s say I’ve invented lemonade, and claim a pleasant beverage comprising a quantity of water, an amount of lemon juice and an amount of sugar, etc.
Once I’ve mailed the ap, I realize I need to broaden “sugar” to –means for sweetening said pleasant beverage–. The examiner most likely won’t make a WDR rejection regarding the broadening of this element.
I also realize that I’ve enabled limeade using exactly the same process, but how to claim it? Change “lemon juice” to –an amount of juice from a citrus fruit containing at least 5% citric acid–. Could be trouble here relative to the WDR, but if there are published chemical breakdowns of citrus juices, it should fly, though not with any of my examiners.
Earl Gray
pdrafter- I’m pretty sure that would be an enablement issue, not written desc.
Hecky’s- Also, sounds like enablement to me.
The difference in the two rejections, from the examiners OA perspective is:
Enablement:
Claim*** rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. ***.
Written Desc:
Claim*** rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. ***.
They are two separate issues.
MVS:
Actually in the biotech area we often make written description rejections on claim terms even if they appear in the spec. as originally filed. For example, “drug X, a fragment thereof, a variant thereof, or anything that could be derived from X with infinite possible substitutions of molecules” is not described. What does it look like? Once you include making all possible substitutions, the thing is not described.
I realize that may well be a biotech-specific issue however.
The trend among many patent attorneys is to include in their applications minimal Background of the Invention info, no Summary of the Invention and maybe even no use of the word “invention” in their application. If they include no claims in their provisional application, my guess is that the Federal Circuit may eventually say that those provisional applications, except for narrow picture claims, does not provide written description support for broad claims in the later-filed regular applications. Anyone agree?
In general, what 6K says is true. If the problem is that something is recited in the claims & not specifically stated in the spec., an objection to the spec as not providing antecedent basis for what is claimed, rather than a 112, 1, rejection is the proper course of action. This is assuming that we are discussing an originally filed claim. An amended claim that adds the material would be rejected (new matter 112,1). And, of course, if more material than what was in the claim is added to the spec, that can also raise a new matter rejection.
So, in the example #2, adding the material into the claims “may” overcome the written description rejection but there can still be an enablement issue (though I am not sure, as the bio areas are somewhat different than the rest of the office when it comes to 112, 1, written desc & enablement).
What LL, Hecky & 6K, above, explain about 112, 1, desc. & enab. are reasonable and decent primers as to a basic understanding of these issues. The one point I would add/clarify is that (at least in the electrical & mechanical areas) for original claims do NOT make a written description rejection since the claims (usually – like 99% of the time) provide their own written description. Enablement is OK for this, but not written description.
Unfortunately, I see WAY too many actions where the examiner does not understand the differences between the 2 issues. More training is badly needed as this gets messed up way too often.
MVS
e#6k wrote – So, in his example no. 2 you’d get an objection rather than a rejection and you’d just say what was in the claim “A method of treating any disease by administering drug X, a fragment thereof, a variant thereof, or anything that could be derived from X with infinite possible substitutions of molecules.” into the detailed desc portion and you’d be all good to go. If you get a rejection over something like that it will be improper, –
What? I mean, I’m all for easy allowance of claims … that’s my job … but really, does merely moving that broad claim into the “detailed” description enhance the ability of one skilled in the art to successfully (i.e., _operably_) treat “any disease” using compound X or “a variant thereof”, etc., without “undue experimentation”?
Also, I need to add, that if for instance the applicant had said something in his detailed desc. that would suggest specifically to one of ordinary skill that he did not have possession of the subject matter in the claim (even though it was claimed in the originally filed app) then you can still get a written desc. rejection on first action, but it’s for a different reason than that you just didn’t support it, it’s that you said something that specifically leads us to believe you didn’t know of the subject matter of a claim at time of filing. Kind of confusing but there it is.
Also, I had a typo in the above post, it should be “So, in his example no. 2 you’d get an objection rather than a rejection and you’d just have to move what was in claim “…” into the detailed desc”***
What Hecky says is true, but for the purpose of written desc. we now count the claims as originally filed as written desc. also, so instead of getting a rejection you’ll get an objection to move those words that were in the claims to the spec, instead of having to forgo that subject matter entirely for the rest of the app. So, in his example no. 2 you’d get an objection rather than a rejection and you’d just say what was in the claim “A method of treating any disease by administering drug X, a fragment thereof, a variant thereof, or anything that could be derived from X with infinite possible substitutions of molecules.” into the detailed desc portion and you’d be all good to go. If you get a rejection over something like that it will be improper, UNLESS it is on an amended claim (not as originally filed), for these purposes claims amended prior to first action still count as an “amended” claim since they were not present at time of filing.
Law Student:
Written description is a separate requirement from enablement. Enablement deals with whether one skilled in the relevant art could make and use the invention given the disclosure. The invention, of course, is the invention as defined by the claim(s). In the technology that I examine (biotech.), we rarely deal with total lack of enablement but more often deal with the question of whether the subject matter enabled by the specification is of the same scope as what is claimed.
Example of something enabled by the spec:
Claim: A method of treating cancer by administering drug X.
The spec. shows drug X’s chemical structure and teaches how to make it. The spec. also shows that drug X kills cancer cells in a dish, and reduces the size of seventeen kinds of tumors when put into rats, mice, hamsters, dogs, and monkeys.
Example of something not enabled by the spec.:
The spec. shows the same as above.
Claim: A method of treating any disease by administering drug X, a fragment thereof, a variant thereof, or anything that could be derived from X with infinite possible substitutions of molecules.
— don’t laugh, we get stuff like that to examine —
This claim couldn’t be practiced in the absence of undue experimentation. The spec. doesn’t show treatment of all diseases, and the skilled artisan would recognize that treatments for cancer are unlikely to be treatments for Alzheimer’s or influenza. Furthermore, the full scope of things to be administered (X or any variant…) could not be made in the absence of undue experimentation, because the scope of that group of products is so large as to include any and all possible chemical compounds.
Moving to written description, the question is more analogous to whether the inventor/applicant was in possession of what is claimed, and if so is that evidenced by the spec/claims/drawings as originally filed. The first claim, administration of X, clearly satisfies written description. The second claim does not, because the spec. doesn’t describe/disclose the full genus of compounds and the elements common to all members of the genus. The spec. does not provide evidence of possession of the full genus of compounds, because it only shows the structure of a single compound (drug X).
Before all practitioners jump all over me (which is, of course, inevitable), realize that:
1) I am trying to show a distinction between WD and enablement
2) The case is not a real one but an example
3) Yes, I am an examiner
4) No, I am not Examiner #6k
5) I don’t pretend to speak for the office and in fact am not writing from the office computer! Gotta love work-at-home.
Hecky’s: It’s the Sauce
Law Student,
You are not alone in failing to see the difference between written description and enablement. The PTO and the Federal Circuit often conflate the issues. The resulting case law is a murky swamp.
Example 1: Page 6-Middle Tree-3rd Box-two “NO” branches-“lower” NO branch apparently in error.
Thanks, Dennis. Given that the USPTO seems to make little to no effort to make potentially use info like this known and available to practitioners without us having to wade through all of their other crap, your notices are much appreciated.
Thank you. That helps.
A general analogy (not 100% match but close enough to help understand the concepts) is to think of written description as analogous to 102 and enablement as analogous to 103.
For written description, just like a 102 rejection, everything claimed has to be in the originally filed description (spec, claims, drawings). Anything not clearly there, it would be necessary to make an argument (basically) like inherency.
For enablement, like 103, what is claimed has to be either disclosed or have been obvious to one of ordinary skill in the art based on what was known at the time of filing. Thus, things like ordinary skill, standards, or other prior art might be able to be used to show that the disclosure would have been enabling to one of ordinary skill in the art.
Again, this is not a perfect analogy. But it is a good starting point for people to get some concept as to what the differences between the 2 different 112, 1, requirements are.
thanks,
LL
@law student,
check out in re Curtis for some relevant case law regarding WD/enablement (cited in the MPEP)
Dear Law Student,
A “written description” just has to explain what the invention _is_. An “enabling description” has to explain how to _make_ and _use_ the invention.
Does anybody really understand how written description is different than enablement? I’m really confused on this concept.
Thanks.
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