BPAI confuses enablement and written description?

Takeaway: In appealing a § 112 First written description rejection, the Applicant properly argued  "possession" in the Appeal Brief but mistakenly referred to "enabling" in the Reply Brief. The BPAI affirmed the rejection, but seemed to do so soley on the basis of enablement argument in the Reply Brief, ignoring the written description argument in the Appeal Brief. The Board first noted the Examiner's finding that the original specification did not disclose the amended claim's "computer program product on a computer readable medium." The Board then explained that the Applicant did not address this finding and instead argued that the amended claim was enabled under § 112 First. "Such an argument is immaterial to a written description rejection."

Details:
Ex parte Van Rijnsoever et al.
Appeal No. 2009006117; Appl. No. 10/482,145; Tech. Center 2400
Decided  June 28, 2010

The claim at issue was originally filed as:

10. A computer program product arranged for causing a processor to execute the method as claimed in claim 1.

The Examiner rejected the originally filed claim under § 101, asserting that "a 'program product' not embedded in a tangible medium amounts to functional descriptive material which is nonstatutory." The method claim 1, to which claim 10 referred, was not rejected under § 101 or § 112 First.

In response to the rejection, the Applicant amended as follows:

10. A computer program product on a computer readable medium that is arranged for causing a processor to execute the method as claimed in claim 1.

The Examiner withdrew the § 101 rejection for amended claim 10. But the Examiner gave a new rejection under § 112 First written description, asserting that "the original filed disclosure does not disclose a computer program product on a computer readable medium." The method claim 1, to which claim 10 referred, was not rejected under § 101 or § 112 First.

In the Appeal Brief, the Applicant argued the § 112 First written description rejection as follows:

The applicants are not certain whether the Office action asserts that the applicants did not have possession of a computer readable medium, or did not have possession of a computer program product on a computer readable medium. In either case, the applicants respectfully maintain that the possession of a method to perform a particular function, such as inserting synchronization information into a packet, circa 2003, necessarily and sufficiently indicates that the applicants possessed the ability to provide a computer program on a computer readable medium to execute each of the elements of claim 1. Accordingly, the applicants respectfully maintain that the rejection of claim 10 under 35 U.S.C. 112, first paragraph should be reversed by the Board.

In the Answer, the Examiner seized on the Applicant's use of the phrase "ability to provide" and  suggested that the Applicant had argued enablement rather than written description:

h. With respect to the rejection of claim 10 under 35 USC 112, first paragraph, Appellant, on page 15, argues that the possession of a method to perform a particular function, such as inserting synchronization information into a packet, circa 2003, necessarily and sufficiently indicates that the applicants possessed the ability to provide a computer program on a computer readable medium to execute the elements of claim 1.
     The originally filed disclosure does not disclose a computer program product on a computer readable medium. Therefore, the rejection of claim 10 is a written description issue, rather than an enablement issue.
(Emphasis in original.)

The Applicant filed a Reply Brief, arguing as follows:

The Examiner's Answer asserts that because the applicants' specification does not expressly disclose a computer product on a computer readable medium, claim 10 does not satisfy the requirements of 35 U.S.C. 112, first paragraph. ... The applicants respectfully maintain that the method of the invention is presented in full, clear, concise, and exact terms to enable any person skilled in the art to embody the invention as a computer program on a computer readable medium, and as such, satisfies the requirements of 35 U.S.C. 112, first paragraph.
(Emphasis added.)

The Board affirmed. The Board seemed to reach this conclusion by accepting the Examiner's characterization of the Appeal Brief argument, in conjunction with the explicit reference to "enable" in the Reply Brief:

Here, the Appellants admit that claim 10 was amended to recite that the originally claimed computer program product is provided on a computer readable medium. (Amendment and/or Response under 37 C.F.R. § 1.11 1, at 14, filed March 28, 2007.) The Examiner finds that the original filed disclosure does not disclose a computer program product on a computer readable medium. For their part, the Appellants do not address this finding but instead argue that the amended claim is enabled under 5 112, ¶ 1. Such an argument is immaterial to the written description rejection. Based on the aforementioned facts and analysis, we conclude that the Examiner did not err in finding that claim 10 lacks an adequate written description.
(Emphasis added.)

My two cents: 1) The Board really blew this one. 2) If you lose on appeal, read the decision carefully and ask for a Rehearing if the Board made an error like this one.

You're very limited in a Rehearing. A Request for Rehearing "must state with particularity the points believed to have been misapprehended or overlooked by the Board." Furthermore, "arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing."

However, in this particular case, I think the record is clear that the Board misapprehended the Applicant's argument.The decision made no reference to the possession argument in the Appeal Brief, and said pretty clearly that the Board relied on the enablement argument in the Reply Brief to affirm the rejection.