Comments on: The Fundamentals Of The Written Description Requirement And Strategies For Responding To Written Description Rejections – Part I http://patentablydefined.com/2008/01/18/the-fundamentals-of-the-written-description-requirement-and-strategies-for-responding-to-written-description-rejections-%e2%80%93-part-i/ A practical patent prosecution blog published by Michael Kondoudis Mon, 23 Apr 2012 10:38:57 +0000 hourly 1 http://wordpress.org/?v=3.3.2 By: MaxDrei http://patentablydefined.com/2008/01/18/the-fundamentals-of-the-written-description-requirement-and-strategies-for-responding-to-written-description-rejections-%e2%80%93-part-i/comment-page-1/#comment-1985 MaxDrei Fri, 25 Jan 2008 07:26:14 +0000 http://patentablydefined.com/?p=37#comment-1985 Thank you, anonymous. Your "If the original filing anticipates the claim" test looks like the "novelty" test the EPO uses, to check whether a prosecution amendment adds matter. The public policy reason to stop Applicants getting to issue with claims that really ought not to enjoy the filing date of the app as the date of their defence against validity attacks is the same in both jurisdictions, yet Americans think EPO is super-strict while Europe thinks the USPTO is super lax. Funny, isn't it? Thank you, anonymous. Your “If the original filing anticipates the claim” test looks like the “novelty” test the EPO uses, to check whether a prosecution amendment adds matter. The public policy reason to stop Applicants getting to issue with claims that really ought not to enjoy the filing date of the app as the date of their defence against validity attacks is the same in both jurisdictions, yet Americans think EPO is super-strict while Europe thinks the USPTO is super lax. Funny, isn’t it?

]]> By: anonymous http://patentablydefined.com/2008/01/18/the-fundamentals-of-the-written-description-requirement-and-strategies-for-responding-to-written-description-rejections-%e2%80%93-part-i/comment-page-1/#comment-1984 anonymous Thu, 24 Jan 2008 01:29:11 +0000 http://patentablydefined.com/?p=37#comment-1984 "For X (I am told)the intermediate generalisation not originally present is not 'new matter' but it might offend the 'written description' requirement. Would it?" In many arts, written description under the US standard is a very easy standard to meet. Unless the applicant makes explicit statements to the contrary, the applicant can almost always add or remove elements from a claim even if that particular combination is not shown. Moreover, unless the applicant makes explicit statements to the contrary, the applicant can broaden terms using any term available in the dictionary--this includes using the "intermediate generalism" that is found in the dictionary and reads on what it shown in the drawings. Basically, if the drawings and/or the spec could anticipate a claim, you probably can claim it in the US. The EPO's new matter is essentially a super strict version of written description where you basically need the precise words and also the precise combination of elements recited. “For X (I am told)the intermediate generalisation not originally present is not ‘new matter’ but it might offend the ‘written description’ requirement. Would it?”

In many arts, written description under the US standard is a very easy standard to meet. Unless the applicant makes explicit statements to the contrary, the applicant can almost always add or remove elements from a claim even if that particular combination is not shown. Moreover, unless the applicant makes explicit statements to the contrary, the applicant can broaden terms using any term available in the dictionary–this includes using the “intermediate generalism” that is found in the dictionary and reads on what it shown in the drawings.

Basically, if the drawings and/or the spec could anticipate a claim, you probably can claim it in the US. The EPO’s new matter is essentially a super strict version of written description where you basically need the precise words and also the precise combination of elements recited.

]]> By: Points to Ponder http://patentablydefined.com/2008/01/18/the-fundamentals-of-the-written-description-requirement-and-strategies-for-responding-to-written-description-rejections-%e2%80%93-part-i/comment-page-1/#comment-1957 Points to Ponder Sun, 20 Jan 2008 00:56:43 +0000 http://patentablydefined.com/?p=37#comment-1957 The Board is probably doing the right thing here, becuase an agency is required to "conclude a matter presented to it." 5 U.S.C. s 555(b). (The Board acts illegally in those frequent cases where it remands a case that it could have decided. The Board of Appeals is not a court of appeals, because it has full power and duty to make all findings of fact if the appellant asks, even where an examiner simply skipped the issue.) However, when the Board does so, it is a "new ground of rejection," which triggers all the procedural rights of 37 CFR s 41.50(b). The Board is probably doing the right thing here, becuase an agency is required to “conclude a matter presented to it.” 5 U.S.C. s 555(b). (The Board acts illegally in those frequent cases where it remands a case that it could have decided. The Board of Appeals is not a court of appeals, because it has full power and duty to make all findings of fact if the appellant asks, even where an examiner simply skipped the issue.) However, when the Board does so, it is a “new ground of rejection,” which triggers all the procedural rights of 37 CFR s 41.50(b).

]]> By: MaxDrei http://patentablydefined.com/2008/01/18/the-fundamentals-of-the-written-description-requirement-and-strategies-for-responding-to-written-description-rejections-%e2%80%93-part-i/comment-page-1/#comment-1956 MaxDrei Sat, 19 Jan 2008 18:13:49 +0000 http://patentablydefined.com/?p=37#comment-1956 In the EPO, an Applicant from USA (X) will often provide a spec that first presents a statement of invention at an implausible level of generality , then a detailed description of one or more pinpoints (no generalisation at all) within the claim 1 envelope. When the Exr finds the relevant art, I am instructed in response to take through to issue (as already achieved in USA) an amended independent claim that presents an intermediate level of generalisation (which as I say is NOT disclosed in the original app). For us in FTF Europe, that's depriving of his rightful reward that other Applicant (Y) who filed at the PTO, after X but before X's amendment (and before any other inventor, including X), a patentable selection invention corresponding to that level of generality. For X (I am told)the intermediate generalisation not originally present is not "new matter" but it might offend the "written description" requirement. Would it? In the EPO, an Applicant from USA (X) will often provide a spec that first presents a statement of invention at an implausible level of generality , then a detailed description of one or more pinpoints (no generalisation at all) within the claim 1 envelope. When the Exr finds the relevant art, I am instructed in response to take through to issue (as already achieved in USA) an amended independent claim that presents an intermediate level of generalisation (which as I say is NOT disclosed in the original app). For us in FTF Europe, that’s depriving of his rightful reward that other Applicant (Y) who filed at the PTO, after X but before X’s amendment (and before any other inventor, including X), a patentable selection invention corresponding to that level of generality. For X (I am told)the intermediate generalisation not originally present is not “new matter” but it might offend the “written description” requirement. Would it?

]]> By: D.C. Patent Associate http://patentablydefined.com/2008/01/18/the-fundamentals-of-the-written-description-requirement-and-strategies-for-responding-to-written-description-rejections-%e2%80%93-part-i/comment-page-1/#comment-1955 D.C. Patent Associate Fri, 18 Jan 2008 19:55:19 +0000 http://patentablydefined.com/?p=37#comment-1955 "In the absence of a prima facie case, an Applicant is under no obligation to present a rebuttal. So, until the Office has met this initial burden to “fully develop reasons for the rejection by providing “properly reasoned and supported statements,” the obligation to rebut a written description rejection does not shift to the Applicant." In my experience reviewing BPAI decisions, the Board routinely fills in the gaps of an Examiner's undeveloped rationale. Accordingly, primarily relying on the Examiner's lack of fully developed reasons for the rejection will, IMO, often result in an affirmed rejection by the Board. “In the absence of a prima facie case, an Applicant is under no obligation to present a rebuttal. So, until the Office has met this initial burden to “fully develop reasons for the rejection by providing “properly reasoned and supported statements,” the obligation to rebut a written description rejection does not shift to the Applicant.”

In my experience reviewing BPAI decisions, the Board routinely fills in the gaps of an Examiner’s undeveloped rationale. Accordingly, primarily relying on the Examiner’s lack of fully developed reasons for the rejection will, IMO, often result in an affirmed rejection by the Board.

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