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Reiffin loses (again) at CAFC over written description

By Lawrence B. Ebert, Esq.

Back in the URochester v. Searle case, the CAFC, when looking for text to cite about "written description," reached back to the 2000 case Reiffen v. Microsoft:

?[T]he purpose of the written description requirement is to ?ensure that the scope
of the right to exclude, as set forth in the claims, does not overreach the scope of the
inventor?s contribution to the field of art as described in the patent specification.?? Univ.
of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir. 2004) (quoting Reiffin
v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000)).

The more recent Reiffen case turned, in part, on a more subtle "written description" issue.

In IN RE REIFFIN FAMILY TRUST ,
the CAFC addressed issues arising from Reiffin's reliance on Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1438 (Fed. Cir. 1984). The CAFC noted:

The Board explained that where there is a continuous chain of copending
applications, matter from an earlier application can be added through amendment to a
continuation-in-part application, and for priority purposes that matter will be entitled to
the filing date of the parent application from which the added matter was derived. (...)
The Board held, however, that it is impermissible to add material from a
previous application to an issued patent during reexamination.

The CAFC agreed with the Board on this point: Although there appears
to be no authority directly on point with regard to this
unusual issue, we find the Board?s reasoning sound.

The CAFC noted: And although a patentee is permitted to amend both the
claims and the specification of his patent on reexamination, see 35 U.S.C. § 305; 35
C.F.R. § 1.530(d)(1), he is not allowed to do so in a manner that has the effect of
enlarging the scope of the patent?s claims, see Creo Prods., Inc. v. Presstek, Inc., 305
F.3d 1337, 1344 (Fed. Cir. 2002); In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994)
(a claim is impermissibly enlarged on reexamination ?if it includes within its scope any
subject matter that would not have infringed the original patent?).

Footnote 2 presented an interesting issue:

The Director cites our nonprecedential decision in In re Reiffin, 199 Fed.
Appx. 965 (Fed. Cir. 2006), in which we upheld the PTO?s rejection of a related
application of Mr. Reiffin?s. Although the court in that case held that Mr. Reiffin?s
description of the editor/compiler programs did not constitute a disclosure of ?concurrent
execution? of ?multiple threads,? the Director has not argued that our 2006 opinion
collaterally estops Mr. Reiffin from contesting the Board?s ruling on those issues in this
case, and we do not reach that question.

*** See also

http://ipbiz.blogspot.com/2009/03/paul-hastings-gets-rule-11-sanctions-in.html

Full post as published by IPBiz on July 28, 2009 (boomark / email).