Patent Law

Color Within the Guidelines

By Gary Odom and Jordan Kuhn

The USPTO recently published updated Written Description Training Materials, as a revision to training materials from 1999, to reflect changes in case law and technology.

The training materials begin with an outline of the written description requirement:

Applying the Written Description Requirement

As discussed in the Guidelines for Examination of Patent Applications under the 35 U.S.C. 112, paragraph 1, "Written Description" Requirement (attached as Appendix A - Fed. Reg. 66(4):1103), the examination of patent claims for compliance with the Written Description Requirement should include:

1. A determination as to what the claim as a whole covers. In making this determination, the examiner should consider and discuss the full scope of the claim.
2. A full review of the application to understand how the applicant provides support for the claimed invention including each element and/or step. This review includes comparing the claim scope with the scope of the description.
3. A determination as to whether one skilled in the art would recognize that the applicant was in possession of the claimed invention as a whole at the time of filing. This determination should include the following considerations:
   1. Actual reduction to practice
   2. Disclosure of drawings or structural chemical formulas
   3. Sufficient relevant identifying characteristics, such as:
   1. Complete structure
   2. Partial structure
   3. Physical and/or chemical properties
   4. Functional characteristics when coupled with a known or disclosed correlation between function and structure
   4. Method of making the claimed invention
   5. Level of skill and knowledge in the art
   6. Predictability in the art
4. For each claim drawn to a single embodiment or species, consider the above factors in regard to that embodiment or species to determine whether one of ordinary skill in the art would recognize that the applicant was in possession of the species or embodiment at the time of filing.
5. For each claim drawn to a genus, consider each of the above factors to determine whether there is disclosure of a representative number of species which would lead one skilled in the art to conclude that the applicant was in possession of the claimed invention. The number of species required to represent a genus will vary, depending on the level of skill and knowledge in the art and the variability among the claimed genus. For instance, fewer species will be required where the skill and knowledge in the art is high, and more species will be required where the claimed genus is highly variable.

This is followed by 17 examples.

Professor Crouch narrows it down:

Because most of the action in written description continues to focus on biochemistry, the bulk of the document is directed toward those issues. However, all practitioners should review the following examples:

• Example 1: Written description in relation to priority claims;
• Example 2: Written description in relation to amended claims;
• Example 3: Written description in relation to flow diagrams;
• Example 15: Written description in relation to a genus with widely varying species; and
• Example 16: Written description in relation to a process claim where the novelty resides in the process step.

Full post as published by The Patent Prospector on April 14, 2008 (boomark / email).