C-I-P Enablement by Parent without Incorporation by Reference

In Callicrate v. Wadsworth Manufacturing, Inc. (Fed. Cir. October 31, 2005) the court considered whether continuation-in-part U.S. Patent No. 5,236,434 (the '434 patent, right) contained adequate support for the “caulking gun-type” disclosed in parent U.S. Patent No. 4,691,704 (the ’704 patent, left), even though there was no specific incorporation by reference in the child application. According to Circuit Justice Rader,

"In the present case, the district court determined that the ’434 patent did not contain adequate "disclosure" or "support" for the use of a caulking gun-type tightening mechanism for three reasons: (1) the only disclosure of the caulking gun-type tightening mechanism is in the background section; (2) the
background section contains disparaging remarks about this mechanism; and (3) Callicrate distinguished his winding assembly mechanism from the caulking gun-type tightening mechanism during prosecution. See Summary Judgment Order,
slip op. at 13-14. These three reasons, even in combination, do not support the district court’s conclusion of no enablement.

"First, a patent specification may sufficiently enable a feature under § 112, ¶ 1, even if only the background section provides the enabling disclosure. See Micro Chem., 194 F.3d at 1259-60 (finding that, under a §112, ¶ 6 analysis, the claims encompass a weigh dump method despite the fact that the only disclosure of this method was in the background section); United States v. Telectronics, Inc., 857 F.2d 778, 785
(Fed. Cir. 1988) ("The test of enablement is whether one reasonably skilled in
the art could make or use the invention from disclosures in the patent coupled
with information known in the art without undue experimentation.") (emphasis
added). Indeed, if disclosure solely in the background section were insufficient
to satisfy the enablement requirement of § 112, then the Examiner would likely
have rejected claim 16 during prosecution of U.S. Patent No. 5,997,553 (the ’553 patent) for lack of enablement because the only disclosure of a caulking gun-type mechanism being used in a castration tool embodiment in the ’553 patent appears in the background section. See ’553 patent, col. 2, ll. 1-22 (background section describing caulking gun-type mechanism in depth, referring to U.S. Patent No. 4,691,704), col. 3, ll. 38-43 (summary section disclosing pre-formed loop embodiment, which may be used with prior art devices such as a caulking gun-type mechanism), col. 15, ll. 35-39 (detailed description section disclosing crimping embodiment in comparison to ’704 patent’s elongated crimping rod); Manual of Patent Examining Procedure, § 2164.04 at 2100-183 (8th Ed. Rev. 1, Feb. 2003) ("[T]he examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention." "[I]f an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal.").

"Moreover, contrary to the district court’s opinion, the background section’s discussion of problems with the caulking gun-type tightening mechanism does not mean that one of ordinary skill in the art would not, after reading this discussion, know how to make and use this feature. Indeed this court has stated that disparaging remarks in a background section or remarks characterizing the prior art as less effective do not remove those disclosures as enabling references. See Micro Chem., 194 F.3d at 1260. Again, if these comments in the background failed to provide an enabling disclosure, the Examiner would likely have rejected claim 16 during prosecution of the ’553 patent because these "disparaging" remarks appear in that patent as well. See ’553 patent, col. 2, ll. 1-22. Here, the ’434, ’329 and ’553 patents all identify problems with the caulking gun-type tightening mechanism, but by no means indicate that this mechanism cannot perform the tightening / pulling function. Accordingly, the district court’s reliance on these comments was misplaced.

"Finally, the ’434 patent’s prosecution history is no more dispositive than the noted comments in the background section. During prosecution, the Examiner rejected the pending claims over Wadsworth’s ’704 patent, with its caulking gun-type tightening mechanism, in view of U.S. Patent No. 2,487,425 (the ’425 patent). Callicrate responded by challenging the motivation to combine these references because the ’425 patent was non-analogous art. Callicrate further argued that, even when combined, the references do not teach a process that could "achieve quick and tight application of a ligature band to a body part in accordance with claim 1." Essentially, Callicrate pointed out the very same problems with these devices that already appeared in the background section. At no time, however, did Callicrate have any reason to explain how or why the caulking gun-type mechanism could not be used as a means for pulling in the ’434 patent because the pending application did not claim that technology.

"Thus, the district court did not articulate any sound reasons that the ’434 patent does not enable the caulking gun-type mechanism. To the contrary, the ’434 patent specifically referred to that prior art technology. Without any basis in this record to determine that one of skill in the art could not make and use a caulking gun-type tool with this disclosure, this court cannot sustain the district court’s nonenablement conclusion. Thus, the ’329 and ’553 patents may claim priority based on their relationship to the ’434 patent. The ’736 patent is, therefore, not prior art. Because the jury invalidated both the ’553 and ’329 patents over the ’736 patent as prior art, this verdict cannot stand. Finally, because this court finds in favor of Callicrate on this issue, the court need not address Callicrate’s arguments in support of its motion for a new trial on invalidity."