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CAFC: Dislosure That Merely Allows PHOSITA to "Envision" the Claimed Invention Fails Written Description

By Peter Zura

Goeddel v. Sugano, No. 2009-1156 (September 7, 2010)

This case is directed to an interference between Goeddel and Sugano on inventions relating to modified DNA that codes the 166 amino acid sequence of mature hFIF (Human Fibroblast Interferon).  At the USPTO, Sugano was given priority based on a Japanese application filed in 1980.  The application provided some information regarding sequencing, but did not specifically disclose the claimed sequence until a CIP was filed in 1990.  Goeddel's application was filed in 1989.

The BPAI found that, despite the fact that a complete description of the claimed sequencing was not present in Sugano's 1980 application, one skilled in this field "should have been able to envision" the DNA molecule.  Referring to the high level of skill in this field, the BPAI held that although not explicitly described, a person of skill in the field would conclude that Sugano was in possession of the invention of the interference counts.

Sugano did not dispute that the Japanese Application did not explicitly disclose the claimed DNA encoding, but argued that it was "unnecessary to spell out every detail of the invention in the specification,? since patent applications are ?written for a person of skill in the art, and such a person comes to the patent with the knowledge of what has come before.?

The Federal Circuit rejected Sugano's argument and reversed the BPAI:

The Board erred in ruling that priority is established if a person of skill in the art could ?envision? the invention of the counts. . . . [Federal Circuit precedent] does not hold that envisioning an invention not yet made is a constructive reduction to practice of that invention . . . 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.?

The Board?s decision that the Japanese Application constitutes constructive reduction to practice of the subject matter of these interferences is not in accordance with law, for the Japanese Application does not meet the criteria of §112, first paragraph, as to this subject matter. The award of priority to Sugano is reversed. The cases are remanded for appropriate further proceedings.

Read/download a copy of the opinion here (link)

Full post as published by Two-Seventy-One Patent Blog on September 07, 2010 (boomark / email).