« Closed Circuit Claim Construction | Main | Time Warp »

November 29, 2007

New Matter

Paul Lew and Jason Schiers dreamed up a wheel hub with a clutch, for bicycles, which allowed free wheeling when not pedaling, but instantly engaged when pedaling. The torque transfer was "through a multitude of ball bearings." Lew got 6,644,452 for it. Prosecuting the continuation, he canceled his original claims and submitted a substitute specification, essentially identical, except replacing "ball bearings" with "curved members," and "pockets" with "slots," both new terms. The examiner balked.

In Re Paul Lew and Jason Schiers (CAFC 2007-1196)

35 USC § 132(a) proscribes new matter: "No amendment shall introduce new matter into the disclosure of the invention."

But the examiner rejected Lew's new claims citing 35 U.S.C. § 112 ¶ 1, the so-called "written description requirement," as the claims stretched beyond the original specification in claiming what was not considered possessed.

The PTO examiner objected to the substitute written description and rejected the new claim on the grounds that, by substituting “curved members” for the originally disclosed “ball bearings,” the amendments introduced new matter into the application that was not supported by the initial disclosure. Accordingly, the Examiner issued a final rejection of claim 19 under 35 U.S.C. § 112, first paragraph, for failing to comply with the written description requirement. The Board affirmed, finding “no convincing evidence in the record that the limited disclosure in the specification of a ball bearing, without any indication that anything else could be used, would reasonably convey to an artisan that appellants had possession of the broader concept of any ‘curved member.’”

[T]he Board properly framed the question as whether Lew’s disclosure of only “ball bearings” is sufficient, in light of the initial disclosure, for a person of ordinary skill in the art to have determined that Lew was in possession, as of the initial filing date, of using any “curved member” in place of the ball bearings. See Noelle, 355 F.3d at 1348; TurboCare, 264 F.3d at 1118.

Lew appealed.

It is well established that “[w]hen the applicant adds a claim or otherwise amends his specification after the original filing date . . . the new claims or other added material must find support in the original specification.” TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co, 264 F.3d 1111, 1118 (Fed. Cir. 2001). While this requirement most directly stems from the prohibition in 35 U.S.C. § 132 against introducing new matter into the disclosure, we have also policed this requirement under the written description requirement of 35 U.S.C. § 112, first paragraph. Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003) (explaining that “a rejection of an amended claim under § 132 is equivalent to a rejection under § 112, first paragraph” (quoting In re Rasmussen, 650 F.2d 1212, 1214 (CCPA 1976)); see also Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1255 (Fed. Cir. 2004).

Thus, we have long explained that the written description requirement of § 112 requires the application to “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); see also In re Wright, 866 F.2d 422, 424 (Fed. Cir. 1989) (“When the scope of a claim has been changed by amendment in such a way as to justify an assertion that it is directed to a different invention than was the original claim, it is proper to inquire whether the newly claimed subject matter was described in the patent application when filed as the invention of the applicant. That is the essence of the so-called ‘description requirement’ of § 112, first paragraph . . . .”). The claimed subject matter need not be described “in haec verba” in the original specification in order to satisfy the written description requirement. In re Wright, 866 F.2d at 425. Rather, “the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.” Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004). The same standards govern whether new matter has been added to the specification. See TurboCare, 264 F.3d at 1118.

Lew admitted that a "curved member" was broader than a "ball bearing," but was feeling expansive, and thought the PTO should be feeling expansive too. The last time the patent office felt that expansive was in 1835.

The appeals court wasn't feeling expansive either. Lew's "curved members" curved right into the dustbin.

This ruling got Hal Wegner's knickers in a twist.

[T]he court continued the misunderstanding of 35 USC § 132 "new matter" and its relationship to the 35 USC §112, 1, "written description" requirement.

The 1952 Patent Act as drafted - and today under 35 USC § 112, 1 - contains no "written description" requirement, per se. Rather, the "written description" language of the statute refers to the provision of an enabling disclosure - the sole objective disclosure requirement under that paragraph of the patent law.

Years after enactment in the 1960's, the "new matter" proscription of 35 USC § 132 was transformed into what was the "new matter" equivalent of 35 USC § 112, 1; eventually, with 35 USC § 132 being redundant, the predecessor court in 1981 in Rasmussen [cited in Lew as "1976"] threw out 35 USC § 132 as a basis for rejection: Examiners henceforth should rely upon 35 USC § 112, 1. The new matter proscription related only to new claim language as - obviously - an original claim is part of the application as filed and never could be subject to a new matter question.

In the 1990's, panels of the court judicially created a "possession" requirement even against original claims, as manifested in the cited Noelle case (p. 6).

The Lew case is from one of the most experienced panels of the court involving three patent attorneys who have collectively been registered as patent attorneys and then served on the Federal Circuit for more than 100 years, all having been registered before the 1960's first modification of the practice. Yet, Noelle and the "possession" line of case law is blended together with a discussion of "new matter".

Posted by Patent Hawk at November 29, 2007 9:58 PM | § 112


Hawk or Hal or any other patent wizards reading this,

can somebody explain this one thing I have never understood: when Congress drafted section 112, why on earth did they leave out the paragraph letters?

Have any academics with loose time on their hands ever calculated how much time has been wasted by lawyers having to say or write "Section 112, first paragraph" as opposed to "Section 112(a)"?

Congress certainly wasn't timid about using (letters) when it came to Section 102!!

Posted by: BabelBoy at November 30, 2007 9:13 AM