"Curved Member" Claim Unsupported by "Ball Bearing" Disclosure

In In re Paul Lew (November 29, 2007, nonprecedential) the Federal Circuit held that substantial evidence supported the Board’s determination that Lew’s amendments to replace the term "ball bearing" with the broader term "curved member" were not supported by the initial disclosure.

According to the nonprecedential opinion by Circuit Judge Gajarasa:

. . . the Board properly framed the question as whether Lew’s disclosure of only "ball bearings" is sufficient, in light of the initial disclosure, for a person of ordinary skill in the art to have determined that Lew was in possession, as of the initial filing date, of using any "curved member" in place of the ball bearings. See Noelle, 355 F.3d at 1348; TurboCare, 264 F.3d at 1118.

There is no language in the original written description that would suggest that using "ball bearings" was only one specific embodiment of Lew’s invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (explaining that it will usually be clear from reading the written description whether "the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive.") To the contrary, each time "the invention" is described, including in the summary of the invention and the abstract, it is stated to include "ball bearings." See, e.g., App. at 4 ("[I]t is a principle object of the present invention to provide a hub clutch bearing assembly that provides for a nearly instantaneous coupling of hub inner and annular sections across ball bearings . . . ."); App. at 4 ("[T]he hub of the invention facilitates torque transfer through a multitude of ball bearings that are each housed in contoured pockets . . . ."). This court has consistently viewed such language as "strong evidence" that the inventor intended his invention to be limited to embodiments containing such an element. See Scimed Life Sys., Inc. v. Advanced Cariovascular Sys., Inc., 242 F.3d 1337, 1343 (Fed. Cir. 2001).

Moreover, the original written description could be read as suggesting that the spherical nature of the ball bearings was important to the proper functioning of the invention. The written description discloses that a key improvement of the invention over the prior art is that there is less "scrubbing of the bearing surface" and that therefore the clutch will deteriorate less rapidly, because "[a]s the ball bearings . . . tend to roll in the contoured pockets during free-wheel the engaging surfaces of each of the ball bearings will vary between each engagement." At the very least, the spherical nature of the ball bearings would appear to maximize this ability to roll and engage different parts of the bearing surface.