Tuesday, January 18, 2011

BPAI gives written description rejection when "specification and claims merely recite a description of a problem while claiming all solutions to it"

Takeaway: It's rare to see a written description rejection for an originally filed claim. In fact, MPEP 2163.1.A says there is a strong presumption that originally filed claims have an adequate written description. In Ex parte Krick, the Examiner didn't have a problem with the written description, but the BPAI did. The BPAI entered a new written description rejection because the "specification and claims merely recite a description of a problem to be solved while claiming all solutions to it."

Ex parte Krick
Appeal 2009007641, Appl. No. 10/802,378, Tech. Center 3700
Decided September 20, 2010

The application related to controlling air flow during manufacturing of integrated circuits.

1. An air grate comprising:
one or more pieces of one or more materials adapted to partially cover no more than 40% of a spanned area, allowing air to flow through a plurality of openings disposed in the uncovered portion of the spanned area to meet a semiconductor device manufacturing air flow requirement,
where each of the openings is sufficiently small to meet a semiconductor device manufacturing fall though object size limitation, and
where the one or more materials are further adapted to meet a semiconductor device manufacturing spill protection requirement.

The "spill protection requirement" was added in the first response. All other limitations were present in the originally filed claim. 

The Applicant appealed the only rejection, which was an obviousness rejection using a single reference. The Examiner took the position that the reference was capable of covering 40% of the spanned area, which is all that was required by the "adapted to" language. With regard to the other two requirement limitations, the Examiner explained that choosing a suitable size and suitable material does not patentably distinguish.

On appeal, the Board reversed the obviousness rejection. The Board found that Examiner did not make sufficient factual findings that the reference was actually capable of performing the claimed functions, or provide a rationale for modifying the reference to perform the functions.

The Board then entered a new written description rejection, finding that the "specification and claims merely recite a description of a problem to be solved while claiming all solutions to it." The Board explained the written description issue in some detail:

     In clear contrast [to the written description requirement] is Appellant's specification, which does not describe the claimed requirements except by way of a single structure that is said to satisfy each requirement. The Specification indicates that Appellants invented an air grate having a particular 1 inch opening that covers 40% or less of the span which it covers and that has a 1/2 inch raised edge for spill protection. Spec., paras. 21, 24, and 27. The Specification does not describe all means of how to meet any and all potential spill protection requirements, for example, but rather provides an example of one structure that is said to address a spill protection requirement. Appellants' Specification discloses neither a representative number of examples (species) falling within the scope of the genus of air grates satisfying the claimed spill protection requirement nor structural features common to members of the genus so as to permit one of skill in the art to "'visualize or recognize' the members of the genus." See Ariad, 598 F.3d at 1350. In effect, Appellants' Specification and claims merely recite a description of a problem to be solved while claiming all solutions to it, covering all air grates later actually invented and determined to fall within the claims' functional boundaries. See id. at 1353. Appellants' disclosure is similarly lacking for the other functional requirements.
     Appellants must demonstrate possession of the invention, not merely that which makes it obvious. Id. at 1571-72. The examples in the Specification are not indicative of a disclosure describing an invention of an air grate able to satisfy an air flow, fall through, or spill protection requirement as claimed. Put another way, the Specification merely describes one variant of something that fits within the claims' scope, but does not describe the invention as recited in claims 1, 9, 16, and 23. See id.

My two cents: I think understanding the written description requirement is one of the more challenging aspects of patent law. According to the Federal Circuit, the specification must describe the claimed invention "in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention." But what does that mean?

Ex parte Krick probably isn't of any help when the question of sufficient disclosure is a close call. But Krick is a great example of an clear failure to comply with written description, by claiming all solutions yet disclosing only a few.

Could the Applicant get over the written description rejection by removing the three manufacturing requirements, leaving only an air grate "adapted to partially cover no more than 40% of a spanned area"? The Appeal Brief argued that the 40% parameter was a structural limitation that was novel because it simultaneously met the three claimed manufacturing requirements. But if that's the case, then isn't satisfaction of the three manufacturing requirements simply an inherent result of the claimed structure? 

Not a great strategy, though. The feature "adapted to partially cover no more than 40% of a spanned area" is likely be found obvious, especially after KSR. The applicant probably viewed the manufacturing requirement aspect as the novelty, which is why it was in the claims in the first place.

This case reminded me of the Federal Circuit's Lizard Tech decision. Lizard Tech affirmed invalidation of a claim for lack of a written description. The claim was directed to a compression algorithm, and covered a generic method of performing seamless discrete wavelet transform (DWT). The Federal Circuit held this claim violated the written description requirement because the specification taught only a single way of creating a seamless DWT, and that limitation was missing from the claimed method. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005).


  1. "But if that's the case, then isn't satisfaction of the three manufacturing requirements simply an inherent result of the claimed structure? "

    Demonstrably so. The examiner's rejection was probably fine as well. If he left out some factual findings then he should go ahead and make them of record on remand.

    Note the similarity of this case to B claim cases. Note how the booard might just see fit to treat such a claim when a technically competent board reviews the case.

  2. Note that upon closer inspection the board gave them a 112 2nd as well. I had just been pondering why such would be missing prior to having read the decision.

    "Learn to claim or gtfo" is what they say in the technically competent areas of the office.