Earlier this week we introduced the new Patent Bar Review Question of the Week by posing our first question. Now that we’ve had time to ruminate on it, here’s the question (to remind you) followed by the US Patent Office’s “Model Answer” as well as detailed commentary and analysis from from Patent Resources Group’s Academic Director Paul Gardner.
Question of the Week 1 (Q and A 14 from October 2001 Exam, Morning Session):
Which of the following is not in accord with proper USPTO practice and procedure?
(A) A written description as filed in a nonprovisional patent application is presumed adequate under 35 U.S.C. § 112 in the absence of evidence or reasoning to the contrary.
(B) An examiner may show that a written description as filed in a nonprovisional patent application is not adequate by presenting a preponderance of evidence why a person of ordinary skill in the art would not recognize in the applicant’s disclosure a description of the invention defined by the claims.
(C) A general allegation of “unpredictability in the art” is sufficient to support a rejection of a claim for lack of an adequate written description.
(D) When filing an amendment, a practitioner should show support in the original disclosure for new or amended claims.
(E) When there is substantial variation within a genus, an applicant must describe a sufficient variety of species to reflect the variation within the genus.
Patent Office’s “Model Answer”
(C), not being in accord with proper USPTO practice and procedure, is the most correct answer. “A general allegation of ‘unpredictability in the art’ is not a sufficient reason to support a rejection for lack of adequate written description”; MPEP §2163, paragraph III.A.
(A), being in accord with proper USPTO practice and procedure, is not correct. “A description as filed is presumed to be adequate.” MPEP §2163, paragraph III.A.
(B), being in accord with proper USPTO practice and procedure, is not correct. “A description as filed is presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary has been presented by the examiner to rebut the presumption.… The examiner has the initial burden of presenting by a preponderance of evidence why a person skilled in the art would not recognize in an applicant’s disclosure a description of the invention defined by the claims.” MPEP §2163, paragraph III.A.
(D), being in accord with proper USPTO practice and procedure, is not correct. “[W]ith respect to newly added or amended claims, applicant should show support in the original disclosure for new or amended claims. MPEP §2163, II., A. “Applicant should … specifically point out the support for any amendments made to the disclosure.” MPEP §2163.06, I.
(E), being in accord with proper USPTO practice and procedure, is not correct. [W]hen there is substantial variation within a genus, one must describe a sufficient variety of species to reflect the variation within the genus.” MPEP §2163.05, I.
Paul Gardner’s Commentary:
This question is nicely crafted to test one’s understanding of the following aspects of the written description requirement embodied in 35 U.S.C. Section 112, first paragraph.
(i) There is a strong presumption that the disclosure in an application as filed (including the specification, original claims, and any drawings) contains sufficient information to satisfy the written description requirement.
(ii) A necessary consequence of that presumption is that a Patent Office examiner bears the burden of demonstrating that an application undergoing examination fails to satisfy the written description requirement.
(iii) In order to meet that burden and reject any claim for lack of written description support, the examiner must establish by a preponderance of the evidence that one of ordinary skill in the art, reading the application as filed, would not reasonably conclude that the inventor had intellectual possession of the subject matter claimed.
(iv) The examiner’s burden is not met by general statements or unexplained conclusions, such as “the written description is inadequate because the art is unpredictable.” Rather, the examiner must explain why the unpredictability of the art, vis a vis the applicant’s disclosure, is inadequate; e.g., what is missing from the disclosure.
(v) In order to establish entitlement to a genus claim, the applicant’s disclosure must include a “representative” number of species. “Representative number,” in this context, means a number from which one skilled in the art would reasonably conclude, given the nature of the technology and the level of ordinary skill and knowledge in that technology, that applicant’s invention included the entire genus. In unpredictable technologies, disclosure of one or two species will not suffice. “One robin does not make it spring.”
For more information on how you can prepare yourself for the Patent Bar, please check out Patent Resources Group’s Patent Bar Review Course homepage where you can get information on upcoming dates and locations for the course, including Boston in June, New York in July, San Francisco in November, and Dallas in December. Those unable to attend can even take the review courses via extensive home study DVD course materials! No matter how you take the course, you’ll receive thousands of dollars of study material and software, an exceptional value.
This post was edited by Chris Jagalla.