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Archived updates for Wednesday, November 02, 2005

Golf Cleat Genus Not Supported by 20º Angular Species Range

In McMullin v. Carroll (Fed. Cir., October 31, 2005, not citeable as precedent) the court found substantial evidence to support the Board of Patent Appeals an Interferences’ factual finding that a specification did not indicate possession of the full breadth of the copied claims in an interference because the disclosed angle of a golf cleat was only from from 5º inward to 15º outward.

In this interference, the count (below) was "effectively identical" to added claim 81 of the McMullin application:
A golf shoe cleat comprising a main body member having an inner face and an outer face, a shoe-attaching member projecting perpendicularly outwardly from said inner face and said shoe-attaching member having an axis AL and adapted to secure said cleat in a receptacle in said golf shoe upon rotation of said shoe mounting member in said receptacle,

a plurality of low-profile traction teeth projecting around the perimeter of the outer face of said main body member, each traction tooth having an outer traction surface facing away from said axis AL, said outer surface having an outward angulation relative to said axis AL to enhance lateral stability and traction through the plane of a golf swing.
McMullin argued that the Board improperly construed his disclosure as being limited to the preferred embodiments set forth in his application when it conlcude that this claim was not supported by his specification. However, Circuit Justice Bryson disagreed with that characterization of the Board’s decision:

The Board observed that nothing in the application indicates that the outward
angle of the traction teeth could be greater than 15°. Rather, the application
describes the angle of the traction teeth as being "between about 5º inward . .
. to about 15º outward," without indicating that those angles are merely a
preferred subset of the angles contemplated for the traction teeth of the
invention. In the sentence immediately following disclosure of "an angle . . .
between about 5º inward . . . to about 15º outward," the application states,
"Preferably, the axis of each protrusion is parallel to the normal (i.e. the
angle is 0º)." That language seems to indicate that McMullin contemplated a
closed range of angles from 5º inward to 15º outward, with 0º being the
preferred embodiment. . . .

Moreover, when asked by the Board to "[s]how us something in your spec that
shows you appreciated an angle that’s outside of the range from minus 5 to plus
15," McMullin’s counsel was unable to point to any part of the specification
that did so. The Board therefore did not err by interpreting McMullin’s
disclosure as supporting only the range of angles recited in the application, as
opposed to supporting the full scope of the added claims. . . .

Finally, McMullin argues that the Board’s decision is contrary to the
principle set forth in this court’s decision in Bilstad v. Wakalopulos, 386 F.3d
1116 (Fed. Cir. 2004
), i.e., that the disclosure of a single species constitutes
sufficient support for a claim to an entire genus if the species would
reasonably convey to a person of skill in the art that the inventor possessed
the genus, rather than merely the disclosed species. See id. at 1124. The
Board’s opinion reflects that the Board understood that legal principle but
simply regarded it as inapplicable to the facts of this case.

The application at issue in Bilstad disclosed a sterilization apparatus
having a moveable member capable of manipulating the objects to be sterilized.
The Board held that because the appellants’ application described manipulating
objects "in a small number of directions" and did not describe manipulating
objects "in a large number of directions," the application did not contain
adequate support for a claim reciting a device capable of "manipulating objects
in a plurality of directions." Bilstad, 386 F.3d at 1119. This court reversed
and remanded, holding that the Board had "never truly discussed the
understandings of persons skilled in the art and whether Bilstad’s written
description would reasonably convey to a person skilled in the art that Bilstad
had possession of the claimed subject matter at the time of filing." Id. at

We held that the Board failed to conduct any "analysis of what one skilled
in the art would have understood from the Bilstad disclosure or the degree of
predictability of technical variations in this field of art." Id. at 1126. We
stated that the Board erred in concluding that the disclosure of manipulation in
a small number of directions was insufficient to support the claimed
manipulation of objects in a "plurality" of directions, because the Board failed
"to consider the knowledge of one skilled in the art and the level of
predictability in the field." Id. We therefore remanded the case for the Board
to determine "whether Bilstad’s disclosure of manipulation in a small number of
directions would reasonably convey to a person skilled in the relevant art that
Bilstad had possession of manipulation in a plurality of directions as of his
filing date." Id.

In this case, contrary to McMullin’s contention, the Board did not
apply an incorrect legal test to the question of the adequacy of his disclosure.
In arguing that the Board applied an incorrect legal standard, McMullin focuses
on the Board’s statement that counsel for McMullin "evidently has failed to
appreciate that having a description for a narrow article falling within the
scope of a broad claim is not the same as having a description for the broader
concept itself that is reflected in the claim." McMullin adds that the Board in
this case "specifically rejected the standard that this Court pointed to in
Bilstad, namely what one skilled in the art would discern from the examples that
the specification provides." In support of that contention, McMullin cites a
statement by the Board that section 112, paragraph 1, requires an applicant to
"describe the claimed invention with all its features and not just that which
would render the claimed invention obvious to one with ordinary skill in the

The passages on which McMullin relies do not demonstrate a departure by the Board from the principles set forth in Bilstad. First, the Board was correct that describing a "narrow article" is "not the same as having a description for the broader concept." Contrary to McMullin’s suggestion, to state that principle is not to adopt the much different proposition that a disclosure of embodiments consisting of one or more species within a genus can never suffice to support a claim to the entire genus or to some portion of the genus beyond the particular disclosed species. Indeed, the Board made clear that it understood that the written description for a claim with broad scope "does not require a description of every possible embodiment falling within that scope." , 823 F.2d 500, 504-05 (Fed. Cir. 1987) (same). The problem with McMullin’s application, the Board wrote, was that it "does not reasonably convey that the inventor at the time of filing the application actually contemplated or possessed the idea that the outward angle . . . can be greater than 15°." Second, the Board’s statement that a disclosure is insufficient if it merely reveals something that would make the claimed invention obvious is a well-settled and correct statement of law. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571-72 (Fed. Cir. 1997) ("The question [of adequate written description] is not whether a claimed invention is an obvious variant of that which is disclosed in the specification."); Martin v. Mayer 823 F.2d 500, 504-05 (Fed. Cir. 1987) (same).

The Board repeatedly referred to the test for written description as being what one of ordinary skill in the art would understand, based on the applicant’s disclosure, that the applicant possessed. For example, in language virtually identical to that subsequently used by this court in Bilstad, the Board held that McMullin’s specification "does not reasonably convey to one with ordinary skill in the art that McMullin possessed [on the application filing date] the idea that each traction tooth or an outer traction surface thereof has an outward angle or angulation that is not limited to a particular range or subset of angles." The Board elsewhere recited the proper test as whether "McMullin’s specification reasonably convey[s] to one with ordinary skill in the art that the invention so described includes an outward angle . . . that can extend beyond 15°." Later in the opinion, the Board again correctly stated the test as being "what the specification tells one with ordinary skill in the art about what inventor Faris W. McMullin possessed or appreciated," that is, "what the specification conveys to one with ordinary skill in the art about the ideas possessed by the inventor at the time of filing of McMullin’s involved application." Finally, following its analysis of the record in this case, the Board concluded that McMullin "advanced no persuasive reasoning or supporting evidence on why one with ordinary skill in the art would read anything said about the small range from minus 5° to plus 15° as being equally true for all outward angles without restriction." Accordingly, we find no merit in McMullin’s contention that the Board applied an incorrect rule of law contrary to this court’s decisions in cases such as Bilstad.

Because the Board applied the proper legal test to the written description issue presented by this case, the question on this appeal reduces to whether substantial evidence supports the Board’s factual finding that McMulin’s specification does not disclose traction teeth directed outward at angles substantially greater than 15°. Under that standard, we are not prepared to hold that the Board erred. As noted, the specification refers only to angles in the range between 5° inward to 15° outward, and the specification does not clearly indicate that the designated range is merely exemplary. Moreover, Carroll introduced the statement of an expert witness that a person of ordinary skill in the art would not have understood the disclosure in the specification to suggest that the inventor possessed traction teeth directed outward at angles substantially greater than 15°, while McMullin introduced no contrary evidence at all. Under these circumstances, we conclude that there was adequate support for the Board’s factual conclusion that the written description requirement was not satisfied. . . .

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