Search the Archives           Subscribe           About this News Service           Reader Comments

Archived updates for Tuesday, July 12, 2005

§112 Seperatists, Fusionists, and Clarificationists at the CAFC

According to Meredith Martin Addy, Jeffery M. Duncan and C. Noel Kaman writing in The National Law Journal on June 28, 2005, Judges at the Federal Circuit can be divided into "seperatists," "fusionists," and "clarificationists" when it comes to the first pragraph of 35 USC §112:
Separatists, and some clarificationists, read this sntence as requiring the specification of a patent application to set forth both a "written description of the invention" (written description) and a description with enough detail to "enable" a person of skill in the art to practice the invention (enablement). The separatists currently form the majority and have precedent on their side. This precedent mandates separate analyses for determining whether each requirement is satisfied. Hence, it is possible to enable an invention but not describe it, and vice versa. See, e.g., In re DeLione, 436 F.2d 1404, 1405 (CCPA 1971) (a specification that discusses only compound A and does not contain any broadening language might enable one skilled in the art to make and use compounds B and C; yet the genus consisting of A, B and C is not described).

Fusionists, on the other hand, interpret this same sentence of §112 to include a single requirement. These judges believe that the words "written description" are used merely to explain how one should provide the enabling disclosure: "The specification shall contain a written description of the invention in such ... terms as to enable." Under this interpretation, if the specification is enabling, the written description is necessarily adequate. See, e.g., Enzo Biochem v. Gen-Probe Inc., 323 F.3d 956, 976 (Fed. Cir. 2003) (Rader, J., dissenting from denial of rehearing en banc).

Finally, clarificationists, the third and growing group of judges, believe the Federal Circuit should clarify the proper interpretation of the written-description requirement.
According to the authors, the Federal Circuit "seperatists" include Michel, Mayer, Lourie, Clevenger, Schall and Prost, while "fusionist" judges include Rader, Gajarsa, and Linn. Newman, Bryson, and Dyk "simply want the issue clarified."
    (0)comment(s)     translate     More Updates     Send