Enablement and written description

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Enablement and written description

• Prof. Merges
• 9.8.09

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1 Written Description of Claimed Invention
Disclosure/Enablement, 112
1 Enablement of one skilled in the art without
undue experimentation of
how to make
how to use
1 Best Mode contemplated by inventor
2,6 Claims - definiteness
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U.S.C. 112 1
Disclosure/Enablement, 112
The specification shall contain a written
description of the invention, and of the manner
and process of making and using it, in such full,
clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains,
or with which it is most nearly connected, to
make and use the same, and shall set forth the
best mode contemplated by the inventor of
carrying out his invention.
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U.S.C. 112 2
The specification shall conclude with one or more
claims particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as his invention.
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U.S.C. 112 3
A claim may be written in independent or, if the
nature of the case admits, in dependent or
multiple dependent form.
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U.S.C. 112 4
Subject to the following paragraph, a claim in
dependent form shall contain a reference to a
claim previously set forth and then specify a
further limitation of the subject matter claimed.
A claim in dependent form shall be construed to
incorporate by reference all the limitations of
the claim to which it refers.
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U.S.C. 112 5
A claim in multiple dependent form shall contain
a reference, in the alternative only, to more
than one claim previously set forth and then
specify a further limitation of the subject
matter claimed. A multiple dependent claim shall
not serve as a basis for any other multiple
dependent claim. A multiple claim shall be
construed to incorporate by reference all the
limitations of the particular claim in relation
to which it is being considered.
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U.S.C. 112 6
An element in a claim for a combination may be
expressed as a means or step for performing a
specified function without the recital of
structure, material, or acts in support thereof,
and such claim shall be construed to cover the
corresponding structure, material, or acts
described in the specification and equivalents
thereof.
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CLAIM 1 ELEMENTS
Rotating handle at end of bar
U-shaped bar
Cutting element attached to bar
Base, with passageway
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Enablement/Written Description
Cheese Slicer Specifications, X
The handle may be turned to ... draw the cutting
element taut so that it may properly perform its
cutting function.
Claim Elements
Rotating handle at end of bar
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
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The Incandescent Lamp Patent
Incandescing conductor
Bamboo discovered as an incandescing conductor.
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Claims page 262

• 1. An incandescing conductor for an electric
  lamp, of carbonized fibrous or textile material
  and of an arch or horseshoe shape, substantially
  as hereinbefore set forth.

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System claims

• 2. The combination, substantially as hereinbefore
  set forth, of an electric circuit and an
  incandescing conductor of carbonized fibrous
  material, included in and forming part of said
  circuit, and a transparent hermetically sealed
  chamber in which the conductor is enclosed.

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Narrow picture claim p. 263

• 3. The incandescing conductor for an electric
  lamp, formed of carbonized paper, substantially
  as described.

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Sawyer and Man Commercial product

• Is this relevant to question of infringement in
  this case?

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Edison Patent

• Is this relevant to this case?
• Is it a defense for McKeesport Light that it has
  a license from Edison?

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Overlapping and Blocking Patents

• Quite possible for defendant to have patents that
  plaintiff infringes
• Irrelevant to plaintiffs cause of action

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What is defendants defense?

• Is the complainant entitled to a monopoly of all
  fibrous and textile materials for incandescent
  conductors?

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• If the patentees had discovered in fibrous and
  textile substances a quality common to them all,
  or to them generally, as distinguishing them from
  other materials, such as minerals, etc., and such
  quality or characteristic adapted them peculiarly
  to incandescent conductors, such claim might not
  be too broad.

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• Instead of confining themselves to carbonized
  paper, as they might properly have done, and in
  fact did in their third claim, they made a broad
  claim for every fibrous or textile material, when
  in fact an examination of over six thousand
  vegetable growths showed that none of them
  possessed the peculiar qualities that fitted them
  for that purpose. -- page 266

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Policy rationale

• Was everybody then precluded by this broad claim
  from making further investigation? We think not.

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Edisons experiments relevance?

• How does this evidence bear on the question of
  the proper scope of Sawyer and Mans patent?

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Page 268

• How would it be possible for a person to know
  what fibrous or textile material was adapted to
  the purpose of an incandescent conductor, except
  by the most careful and painstaking
  experimentation?

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• If as before observed, there were some general
  quality, running through the whole fibrous and
  textile kingdom, which distinguished it from
  every other, and gave it a peculiar fitness for
  the particular purpose, the man who discovered
  such quality might justly be entitled to a
  patent but that is not the case here.

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Sawyer and Mann Patent
Claimed All Fibrous and textile material
(6,000 plus embodiments)
Enabled Carbonized paper, plus?
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Updating Incandescent Lamp

• Federal Circuit
• Enablement is an issue of fact
• Standard has not changed
• Patents are required to "teach those skilled in
  the art how to make and use the full scope of the
  claimed invention without 'undue
  experimentation.' " Genentech Inc. v. Novo
  Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997).

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Updating, continued . . .

• Automotive Technologies Intern., Inc. v. BMW of
  North America, Inc.,501 F.3d 1274 (Fed Cir 2007)

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Claim

• 1. A side impact crash sensor for a vehicle
  having front and rear wheels, said sensor
  comprising
• (a) a housing 
• (b) a mass within said housing movable relative
  to said housing in response to accelerations of
  said housing 
• (c) means responsive to the motion of said mass
  upon acceleration of said housing in excess of a
  predetermined threshold value, for initiating an
  occupant protection apparatus and 

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• (d) means for mounting said housing onto at least
  one of a side door of the vehicle and a side of
  the vehicle between the centers of the front and
  rear wheels, in such a position and a direction
  as to sense an impact into the side of said
  vehicle.

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• Figure 11 is a conceptional view of an
  electronic sensor assembly 201 built according to
  the teachings of this invention. This sensor
  contains a sensing mass 202 which moves relative
  to housing 203 in response to the acceleration of
  housing 203 which accompanies a side impact
  crash. The specification further states that the
  motion of the sensing mass can be sensed by a
  variety of technologies using, for example,
  optics, resistance change, capacitance change or
  magnetic reluctance change. The enablement of
  this electronic side impact sensor is at issue in
  this appeal.

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• According to Delphi, providing an enabling
  disclosure of only mechanical side impact sensors
  is insufficient to satisfy the enablement
  requirement because the full scope of the claims
  is not enabled. Delphi further responds that the
  short recitation of an electronic sensor in the
  specification does not in fact enable an
  electronic side impact sensor because it does not
  teach one skilled in the art how to make and use
  such a sensor without undue experimentation.
  501 F.3d at 1281

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• Only one short paragraph and one figure relate
  to an electronic sensor. Importantly, that
  paragraph and figure do little more than provide
  an overview of an electronic sensor without
  providing any details of how the electronic
  sensor operates. Figure 11 shows a very general
  view of an electronic side impact sensor.

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The Written Description Requirement
Scope of enablement vs. scope of that which you
have described
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
The term console does not cover a sofa section
having a seat back that folds down to serve as a
table top. (This was to distinguish Gentrys
sofa from prior art.) The Federal Circuit
limits the scope of the claim to cover sofas in
which the recliner control is located on the
console and invalidates 12 claims in the patent
under 112. The court affirmed that Berkline
had not infringed on Gentrys patent by
constructing reclining chairs separated by a
center seat whose back cushion pivoted to form a
table.
Original Claim Language
Prosecution History
Amended Claim Language
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Gentry Gallery, contd
Canon 1 Claims should be interpreted such that
the preferred embodiment falls within their scope.
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
The term console does not cover a sofa section
having a seat back that folds down to serve as a
table top. (This was to distinguish Gentrys
sofa from prior art.) The Federal Circuit
limits the scope of the claim to cover sofas in
which the recliner control is located on the
console and invalidates 12 claims in the patent
under 112. The court affirmed that Berkline
had not infringed on Gentrys patent by
constructing reclining chairs separated by a
center seat whose back cushion pivoted to form a
table.
Original Claim Language
Prosecution History
Amended Claim Language
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Patent Specification
Enabled subject matter everything the inventor
teaches to one of skill in the art.
Enabled
Described embodiments of the invention
everything the inventor adequately describes to
one in the art everything the inventor shows she
is in possession of or contemplates as embraced
by her invention
Specification
Described
Claim 1 Original Application
Claim 2
Claimed in C-I-P or amended application
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Specification Re-filed
If the inventor re-files the specification at a
later date, she cannot claim what the first
filing enabled but failed to describe.
Enabled
Described
Claim 1 Original Application
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Whats claimable?
Dedicated to the Public
Competitor
Original Description
Competitor
Taught by Patent
Competitor
Claimable by original inventor
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Gentry Gallery v. Berkline Corp.
Enabled 2 reclining seats in a sectional sofa
controls not located on arms of chair
Enabled
Specification for Gentry patent
Described pair of reclining seats in a
sectional sofa with a fixed console that houses
the control means
Described
Claim 1
Claimed pair of reclining seats in a sectional
sofa, a fixed console, and a pair of controls.
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Power Oasis, Inc. v. T-Mobile, Inc.

• 522 F.3d 1299 (Fed Cir 2008)
• Original and amended claims to vending machine
  purchase of mobile phone access minutes for
  laptops
• Held Amended Claims fail to meet Written
  Description Requirement

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Written Description and Claim Amendments

• The '658 and '400 patents list filing dates of
  November 6, 2001 and October 15, 2002,
  respectively. The '658 and '400 patents stem from
  a series of continuation and continuation-in-part
  applications. The first application in the patent
  chain (Original Application) was filed on
  February 6, 1997 and ultimately issued as U.S.
  Patent No. 5,812,643 ('643 patent). PowerOasis
  does not assert the '643 patent in this
  litigation.

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• PowerOasis sued T-Mobile for patent infringement
  alleging that T-Mobile's wireless HotSpot
  Network FN1 infringes claims 15, 18, 31, 35, 38,
  40, and 49 of both PowerOasis patents.

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PowerOasis Claim

• 1. A vending machine for vending
  telecommunications channel access to a customer,
  said vending machine comprising 
• a payment mechanism for obtaining information
  from the customer to initiate a vending
  transaction 
• a customer interface for indicating the status of
  said vending machine
• an electronic circuit for determining when the
  vending transaction is completed 

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• a telecommunications channel access circuit
  adapted to be connected to at least one external
  telecommunications channel for enabling access .
  . .
• a telecommunications channel access connector
  connected to said telecommunications channel
  access circuit for enabling connection to an
  external telecommunications device of the
  customer and 
• a control unit having a device for receiving
  payment information from the customer and for
  controlling said electronic circuit and said
  telecommunications channel access circuit.

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• Written description not met -- amendments