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Ex Parte Waide, Appeal 2010-012009 (BPAI 2012). Judge Saindon.

Posted Sunday, March 4, 2012 by Mike Gibbons

The inventor in the case had applied for a patent for a rotorcraft having an electric motor to pitch the blade of the rotorcraft. A dependent claim was included claiming a controller to cooperate with the motor to provide continued operation of the motor in the event of a phase failure.

The Examiner in the case rejected the claim under 35 U.S.C. §112, first paragraph, for failing to convey to one with skill in the art that the inventor had possession of the invention. Essentially, the Examiner rejected the patent claim because the application failed to comply with the “written description” requirement, in that there was insufficient description of the “controller” in the application.

Recall that the basic bargain between an inventor and the government regarding patents is that in exchange for awarding the inventor a limited-time exclusive right to practice the invention, the inventor must “disclose the technologic knowledge upon which the patent is based,”* Capon v. Eshhar*, 418 F.3d 1349, 1357 (Fed. Cir. 2005). The disclosure puts the public in possession of the invention, so that when the patent monopoly expires, all can benefit from the new technology. Therefore, a sufficient written description is required as a part of the application for a patent.

Stated more concisely, “The written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent’s term.” MPEP 2163 (I), “Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112, para. 1, ‘Written Description’ Requirement.”

However, an additional aspect of the written description requirement is to ensure that a patent is only issued when an inventor has actually invented something, and not merely stated a problem and an abstract solution. Therefore, the USPTO will examine an application for signs that an inventor “has possession” of the invention at the time the application was filed. In other words, at the time of filing, the inventor must have known how to make the invention and have been able to describe its construction to one with skill in the art.

In the *Ex Parte Waide *appeal, the inventor claimed a “controller” designed to keep an electric motor running. Discussing the controller, the original application disclosed, “It is contemplated that a preferred rotorcraft having an electric blade pitch actuator might also be equipped with a controller that could provide the vehicle with individual blade control…” The word “controller” was not included again in the application until the patent claims.

The inventor pointed to paragraphs discussing fault tolerance as an example of a feature that allowed the motor to continue operating during a failure, although the text did not expressly state that it was a controller that did so. For example, “This fault tolerance can be achieved by observing the separation of adjacent phase windings thermally, magnetically, and electrically.” The inventor argued that this feature could include a controller.

The Board rejected this argument, citing* Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997). “It is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure [but] whether the application necessarily discloses that particular device.” * Id. at 1572 (emphasis in original). The board cited further to Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), stating “A blanket statement that an invention includes certain features does not necessarily mean that all structures possibly embodying that feature are a part of the invention. * Id.* at 1352.

Here, just because a controller was theoretically a way to implement the fault tolerance, the board did not find that such a controller had been described in sufficient detail for it to be claimed a part of the invention. Just by naming a controller without describing the controller in more detail was insufficient to demonstrate to one with skill in the art that the inventor had possession of the invention.

But knowing how much detail in which to describe an element of an invention can be tricky. Whether a specification adequately describes an invention is a question of fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). Put another way, whether the written description requirement is satisfied is determined on a case-by-case basis. There are no bright lines for whether written description is satisfied; just the opposite, in fact. “The description requirement does not demand any particular form of disclosure.” Carnegie Mellon University v. Hoffman-La Roche Inc., 541 F.3d 1115, 1122 (Fed Cir. 2008). Further, the specification does not need to recite the claimed invention word-for-word. Lockwood, at 1571-1572.

The required level of disclosure varies to some degree with the maturity of the technology. In a mature technology, a specification may include only a method of making the invention and the function of the invention. See, e.g., In re Hayes Microcomputer Products, Inc. Patent Litigation, 982 F.2d 1527, 1534-35, 25 USPQ2d 1241, 1246 (Fed. Cir. 1992) (“One skilled in the art would know how to program a microprocessor to perform the necessary steps described in the specification. Thus, an inventor is not required to describe every detail of his invention. An applicant’s disclosure obligation varies according to the art to which the invention pertains. Disclosing a microprocessor capable of performing certain functions is sufficient to satisfy the requirement of section 112, first paragraph, when one skilled in the relevant art would understand what is intended and know how to carry it out.”).

But where the invention is in an emerging and unpredictable technology, more evidence is required to show possession. In other words, a more complete description is required to show that the specification is more than a “wish for possession.” * See *MPEP 2163 II, “Methodology for Determining Adequacy of Written Description.”

The good news is that “there is a strong presumption that an adequate written description of the claimed invention is present when the application is filed.” In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976) (“we are of the opinion that the PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims”). Accordingly, section 112 first paragraph rejections of the original claims are supposed to be rare, and when they are present they are supposed to be accompanied by evidence or technical reasoning on the part of the Examiner in support of the rejection. Indeed, in Ex Parte Waide, the 112 rejection of “controller” did not occur until a Final Office Action, after the “controller” term had been inserted as a claim amendment following the first Office Action.

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