Written Description II. Prof Merges Sept. 7, 2010. Casebook p. 305.
Sept. 7, 2010
“In this case, the original disclosure clearly identifies the console as the only possible location for the controls. It provides for only the most minor variation in the location of the controls, noting that the control “may be mounted on top or side surfaces of the console rather than on the front wall . . . Without departing from this invention.”
Univ. of Rochester v. GD Searle & Co., 358 F.3d 916 (Fed. Cir. 2004)
1. A method for selectively inhibiting PGHS-2 activity in a human host, comprising administering a non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product to a human host in need of such treatment.
“The present invention provides a simple in vitro system for the screening of drug actions on both the constitutive and the inflammatory cyclooxygenase, which will be useful for the development of drugs that selectively inhibit inflammation without producing the side effects due to inhibition of constitutive prostaglandin production.”
The '850 patent neither discloses any actual Cox-2 inhibiting compound nor provides any suggestion as to how such a compound could be made or otherwise obtained other than by trial-and-error research. Indeed, the court found no evidence in the '850 patent that the inventors themselves knew of any such compound at the time their patent application was filed.
“Without such disclosure [of specific peptides, etc. selectively inhibit Cox 2] the claimed methods cannot be said to have been described.”
Goeddel vs. Sugano
That a modified gene encoding the 166 amino acid protein could have been “envisioned” does not establish [priority]. The question is not whether one skilled in this field might have been able to produce mature hFIF by building upon the teachings of the Japanese Application, but rather whether that application “convey[ed] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) – p. 13
In University of Rochester the court held that the description of the COX-2 enzyme did not also serve to describe all unknown compounds capable of inhibiting the enzyme. University of Rochester, 358 F.3d at 926-27. Precedent in evolving science is attuned to the state of the science, but remains bound by the requirement of showing “that the inventor actually invented the invention claimed.” – p. 14
Yingbin-Nature (Guangdong) Wood Industry Co. v. International Trade Commission
U.S. Court of AppealsFederal Circuit
535 F.3d 1322 (Fed. Cir. 2008)
The tongue is shaped such that, upon insertion into the groove, the lower lip of the groove is displaced a small distance from its original position. The lower lip has an “elastically yieldable or bendable portion,” whereby the lower lip tends to return to its original position when displaced.Thus, when the tongue and the groove are coupled together, the lower lip of the tongue exerts a force against the groove … which draws adjacent floor panels toward each other.
According to Power Dekor, the disclosure of the original ′044 application does not convey with reasonable clarity to those skilled in the art that the inventor possessed the invention—i.e., the concept of clearances—later claimed in claims 5 and 17. Power Dekor contends that the later-claimed concept of “clearances” was not discussed in the original specification; . . .
[R]ather, it was introduced as new matter in the application leading to the ′779 patent through alterations to fourteen paragraphs, the introduction of new reference numbers in certain figures, and the addition of two completely new paragraphs.
[T]he ′779 patent's claims cover the very internal voids that were shown and described in the original disclosure. In addition, they contend that merely adding the generic word “clearance” to describe those spaces did not constitute new matter. Finally, Unilin and the Commission argue that there is nothing improper about using the term “clearance” in two different ways within the ′779 patent—in one way to describe the “recess” of an uncoupled panel and in another to describe different voids formed between two coupled panels.
The internal voids recited in claims 5 and 17 of the ′779 patent are all shown and described in the disclosure accompanying the original ′044 application. “[O]pen spaces” are depicted in at least Figures 7 and 23 of the original disclosure. The spaces were originally described as “dust chambers,” whereas the ′779 patent application was amended to refer to the spaces as “dust chambers or clearances.” [T]he spaces were described as having “the advantage that [they] do not exert an adverse influence upon good engagement.”