Monday, July 12, 2010

BPAI holds that a single disclosed X enables "at least one X" (Ex parte Robson)

Takeaway: In Ex parte Robson, the Examiner issued an enablement rejection for a claim reciting "at least one guide rail" and gave two reasons for the rejection. First, two different structures could meet these claim limitations. Second, under one of those interpretations, the disclosure described only embodiments with a single guide rail. The BPAI reversed the rejection. Addressing the first reason, the Board stated that figuring out which one of two structures was claimed does not amount to undue experimentation. Addressing the second reason, the Board then noted that the phrase "at least one" "encompass[ed] within its scope one guide rail or more than one guide rail." Since the Examiner did not explain why undue experimentation would be required to make and use embodiments with more than one guide rail, the enablement rejection was in error.

Details:
Ex parte Robson
Appeal 2008-006370, Serial No. 10/635,156, Tech. Center 3700
Decided April 30, 2010

As part of the enablement rejection, the Examiner first interpreted the term "guide rail," finding two alternative constructions. The BPAI rejected one of those constructions, and so only addressed enablement under the second, in which projection 130 corresponded to the claimed "guide rail." The BPAI then found that:
The Examiner presented no findings, rationale, or analysis as to why it would require, or how it would amount to, undue experimentation on the part of persons of ordinary skill in the art to make and use other embodiments falling within the scope of those terms, i.e., embodiments having more than one projection 130 ...

My two cents: I agreed with the reversal of the rejection, though I don't see why the Board discussed undue experimentation.Yes, it's generally the appropriate standard for enablement (see MPEP 2164.01), though Examiners don't always deal with it in this manner. However, it seems to me you don't even need to address undue experimentation if you have explicit disclosure, and I think that's the case here.

The Board decided that the claimed "guide rail" was supported by disclosed projection 130. That should have been the end of the analysis: the claim recites "at least one guide rail"; that limitation is met by the single disclosed projection 130. The fact that more than one guide rail/projection anticipates or infringes seems to me irrelevant to the enablement analysis.

I can see  that the undue experimentation analysis could come into play – theoretically – if the specification disclosed a single guide rail yet claimed a plurality of guide rails. On the other hand, can you think of a real scenario where undue experimentation would be needed to get from one instance of a part to multiple instances of the same part?

On the other hand, disclosing a single X yet claiming multiple Xes might get you a Written Description rejection (for original claims) or a New Matter objection (for amended claims). Sure, you can figure out how to make an embodiment with multiple Xes ... but did you really contemplate that possibility such that you possessed multiple Xes?

In fact, that's essentially the position the Examiner took in Robson. The Examiner's Answer explained that a New Matter objection might be appropriate, but not until the issue of alternative interpretations for "guide rail" raised by the Examiner was settled. The Answer went on to state that if the Board decided that the claimed guide rail corresponded to projection 130, then a new matter rejection would be appropriate and in such case "the examiner requests that the appeal be remanded so that a new matter rejection may be made."

You probably won't be surprised to hear that the application in Robson was a continuation, since Written Description and New Matter issues are more likely in continuations. The continuation also claimed priority to a foreign (UK) application, and the claims at issue looked quite different than the foreign claims.

5 comments:

  1. "The fact that more than one guide rail/projection anticipates or infringes seems to me irrelevant to the enablement analysis."

    The problem, from the Examiner's perspective, is that the applicant must enable the full scope of the claim. MPEP 2164.08. In this case, the claim scope includes embodiments that have a single guide rail, but also embodiments that have more than one. It isn't sufficient to just enable one of the embodiments.

    Of course, I agree with you and with the reversal. In my limited experience, it seems that enablement is, and should be, a high burden for the Examiner. Examiners are also not very good at appreciating the subtle distinction between enablement, written description, and new matter issues. I just wanted to address the enablement "commensurate with the scope of the claim" issue.

    "Can you think of a real scenario where undue experimentation would be needed to get from one instance of a part to multiple instances of the same part?"

    Sure, especially as we move into more complex and unpredictable arts (e.g. circuits so complex that they are largely unpredictable to all but those of extraordinary skill). For example, suppose that a claim recited "at least one central processing unit" in a new computing device. How would the additional CPU be connected? Where? How would tasks be divided between the CPUs? There are entire books written about multi-core or multi-processor computing systems, so I don't think a mere claim reference to "at least one CPU" would necessarily be sufficient. That's just one example.

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  2. >the applicant must enable the full scope of
    >the claim. MPEP 2164.08. In this case, the
    >claim scope includes embodiments that have a
    >single guide rail, but also embodiments that
    >have more than one.

    Your logic has a certain appeal, but I gotta disagree.

    My reasoning is simple. "At least one Y" has exactly the same meaning as "a Y". A claim to A widget does not require a spec that describes MULTIPLE widgets. Therefore, a claim to AT LEAST ONE widget does not require a spec that describes MULTIPLE widgets.

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  3. "The Examiner presented no findings, rationale, or analysis as to why it would require, or how it would amount to, undue experimentation on the part of persons of ordinary skill in the art to make and use other embodiments falling within the scope of those terms..."

    Pretty much sums up every non-enablement rejection I've ever received.

    "Examiners are also not very good at appreciating the subtle distinction between enablement, written description, and new matter issues."

    That's a pretty good start to a VERY long list of things the examiners are not very good at appreciating.

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  4. "My reasoning is simple. "At least one Y" has exactly the same meaning as "a Y". A claim to A widget does not require a spec that describes MULTIPLE widgets. Therefore, a claim to AT LEAST ONE widget does not require a spec that describes MULTIPLE widgets."

    Now that you put it that way, I generally agree with you.

    But suppose that the spec clearly indicated that the invention only worked with a single widget. Would that enable a claim to "a widget"? Arguably, the claim would have to recite "a single widget", or else it would lack an essential limitation (and therefore enablement of the full claim scope). MPEP 2172.01.

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  5. >spec clearly indicated that the invention
    >only worked with a single widget. Would that
    >enable a claim to "a widget"?

    I'm inclined to say No, and to agree that the scope must be limited to one widget.

    Suppose the applicant gets this one by the PTO. Is the claim to "a widget" invalid per se? Or is it invalid only if the patentee obtains a broad construction that covers "one or more widgets"?

    I'm inclined to say invalid only with broad construction.

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