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November 4, 2008

Genus Overclaim

Dr. Kenneth Alonso lost his appeal for patenting a cancer treatment because, while he claimed a genus, he had only disclosed some species, and insufficiently so. Disclosure coverage is at issue when the claimed genus is wide-ranging, and the disclosed species may not be fully representative. "A patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated."

In re Kenneth Alonso (CAFC 2008-1079)

To meet the written description requirement, a disclosure must be sufficient "to convince a person of skill in the art that the inventor possessed the invention" as of the filing date.

The written description requirement of 35 U.S.C. § 112, 1, is straightforward: "The specification shall contain a written description of the invention . . . ." To satisfy this requirement, the specification must describe the invention in sufficient detail so "that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005); Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995).

The requirement "serves a teaching function, as a 'quid pro quo' in which the public is given 'meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time.'" Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 922 (Fed. Cir. 2004) (quoting Enzo Biochem, Inc. v. GenProbe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002)).3

3 The requirement is rigorous, but not exhaustive: "[I]t is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention." LizardTech, 424 F.3d at 1345.

Overclaiming a genus happens when there may be "unpredictability" of results with species other than those disclosed.

A genus can be described by disclosing: (1) a representative number of species in that genus; or (2) its "relevant identifying characteristics, "such as a complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics." Enzo, 323 F.3d at 964.

We have previously held in a similar context that "a patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated." Noelle v. Lederman, 355 F.3d 1343, 1350 (Fed. Cir. 2004).

BPAI rejection affirmed.

Posted by Patent Hawk at November 4, 2008 9:47 PM | § 112

Comments

What can I say? I warn ON A DAILY BASIS against overclaiming, but people do it anyway. Do I need to get Barack to add it to the end of a speech on terrorism? "Oh, and YES WE CAN stop overclaiming in America!"

Posted by: 6000 at November 5, 2008 12:07 PM

There's a somewhat fine line as to how many species (i.e. embodiments) have to be disclosed to permit, or enable, applicant to claim a genus.

This applicant did not walk that fine line.

You'll learn all of this when get to your monstrous firm. Or whatever firm you can find that doesn't give you that age old, "Oh, sorry, but we were looking for somebody in another field" line when forwarding your resume to the circular file.

BTW, not sure which is funnier: the monstrous firm's resort to that classic dodge or you actually believing it.

Posted by: JD at November 5, 2008 2:41 PM

As I've told you already JD, they never told me that at all. They told me, as I walked in, that they wanted someone to do work in x field. I take issue with that field even existing, but figured I may as well go ahead with the interview anyway.

Perhaps eventually you'll come to terms with the fact that I'll likely be more successful, and in a shorter period, than you were/are. Until then, sorry.

Posted by: 6000 at November 5, 2008 4:57 PM

Oh, and as to walking a fine line, HAH. Any app that has possession of "enough" species can take the day or two at MAX to write them down.

Anyone rtarded enough to not 1. show as many as possible and 2. claim whichever ones they regard as their invention, deserves any 112 invalidation.

Did you hear about the case where someone had their claim invalidated for failing to claim what they "actually" regarded as their invention? I almost literally fell out of my chair loling. Apparently, as I've maintened for the longest time, the applicant really does have to claim that which they regard as their invention, and what they claim does not dictate what they regard as their invention.

Posted by: 6000 at November 5, 2008 5:03 PM

A question, 6000. What I "regard" is something only I know. How do you, as an Examiner, know what I as an inventor "regard" as my invention? If you glean it from my specification and drawings (what I disclose to you in my app) why is it then that well-reputed US law firms are now filing apps in which the specification begins with the Brief Description of the Drawings. Don't they need what English patent attorneys used to name as "Statements of Invention" before getting to the detailed description of the pinpoint within the ambit of the claim that is the "Preferred Embodiment" or "Best Mode". Or do you know more than they do. I'm confused.

Posted by: MaxDrei at November 6, 2008 8:26 AM

"Or do you know more than they do."

Yes. In his meteoric rise to GS-9 level patent examining, he already knows more than every judge on the Federal Circuit. Comes rather easily when you sit around all day reading what other people wrote. You know what they say, those who can...

"I'm confused."

You're not the only one.

"Did you hear about the case where someone had their claim invalidated for failing to claim what they 'actually' regarded as their invention?"

No, I didn't. Can you give us a case cite? Or is this another one of your, "I remember a case..." type fantasies?

Posted by: JD at November 6, 2008 9:09 AM

"How do you, as an Examiner, know what I as an inventor "regard" as my invention?"

I'm not saying that I do. But I do say that I know that you cannot regard your invention to be more than one thing. I.e. claim 1 and claim 2 depending from it. Because then your invention isn't an "it" it is two things. AN invention is just that. ONE invention. There is no "s" on the end of invention in 112 2nd. It is a singular word. You can see PO for a more in depth analysis. Much more in depth.

Anyway, iirc in the case that just came out it was a judge that determined that the inventor did not claim what they regard as their invention because iirc they claimed something which could not be drawn from the spec. And instead of using 112 1st written desc. he properly used 112 2nd because there is no way the inventor could regard his invention to be something that isn't even covered in the spec. That said, he could have used 112 1st for sure, and it seemed "proper" to me for him to do so. Although, there were some other facts present in the case that I haven't looked into, and I believe those dictated why he used 112 2nd instead of 1st.

I don't believe an examiner made either 112 rejection in that case though.

Sorry JD, I'll try to get the case dug up tomorrow or sometime.

Anyway, time to head outta here. Ttyl

Posted by: 6000 at November 7, 2008 6:50 PM