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Archived updates for Thursday, August 07, 2008

Amendments to Specification Introducing Generic Term Not New Matter

In Yingbin Nature Wood Ind. Co. v. International Trade Commission (July 31, 2008), the Federal Circuit affirmed the Commission’s determination that claims satisfied the written description requirement and were therefore not invalid where a generic term was added to the written description and that term was construed differently between claims.

Power Dekor had contended that the later-claimed concept of “clearances” was not discussed in the original specification; rather, it was introduced as new matter in the application leading to the ’779 patent through alterations to fourteen paragraphs, the introduction of new reference numbers in certain figures, and the addition of two completely new paragraphs.

The Commission's Administrative Law Judge agreed that there was no written description support for the later-claimed concept of “clearances” in the originally-filed disclosure (the ’044 application). The ALJ focused on certain amendments that were made to the originally-filed specification, wherein the applicant used the term “clearance” to describe various areas of the floor panels that had been previously referred to by three separate terms: (1) “recess,” (2) “space” or “intermediate space,” and (3) “chamber” or “dust chamber.” According to the ALJ, nothing in the originally-filed specification indicated that these three different spaces could be treated the same. The ALJ determined that this all-encompassing “clearance” concept constituted new matter, as did the applicant’s re-labeling of certain figures to show clearance locations that were not previously identified. Because the clearance claims were not supported by the originally-filed written description, the ALJ concluded that they were invalid under 35 U.S.C. § 112 ¶ 1.

However, according to the Commission, the applicant’s amendment to the application resulting in the patent did not introduce new matter because it “did no more than label specific clearances and explain what was already shown in the specification and figures of the original application.” Thus, the Commission concluded that the originally-filed disclosure demonstrated that the applicant was in full possession of the subject matter of the clearance claims at the time that original disclosure was filed. The Commission therefore determined that the clearance claims were not invalid under § 112 ¶ 1, finding that the respondents had not proven invalidity by clear and convincing evidence.

According to the opinion by Circuit Judge Schall

. . . we cannot say that the Commission’s conclusion regarding the validity of claims 5 and 17 is unsupported by substantial evidence. That is, substantial evidence supports the Commission’s determination that those claims were adequately described in the originally-filed disclosure. Like the Commission, we do not think that the patentee’s various amendments to the specification—e.g., the introduction of the generic term clearance” and addition of labels to certain figures—in prosecuting the ’779 patent were of such significance as to demonstrate a prior lack of possession with respect to the subject matter claimed in claims 5 and 17.

Nor do we think that the patentee’s attribution of two related meanings to the term “clearance” is problematic. It is the later-claimed subject matter that must be supported by adequate written description in the originally-filed disclosure. See Vas-Cath, 935 F.2d at 1564 (“The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”). Here, there is no dispute with respect to the subject matter that is claimed in claims 5 and 17. Although Power Dekor refers to the patentee’s use of the term “clearance” as “inconsistent,” it does not argue that either claim 5 or claim 17 is indefinite. Indeed, the ALJ had no trouble correctly distinguishing, in context, between the patentee’s use of the term “clearance” in claim 5 to describe an internal void in coupled panels, and in claim 17 to describe the indentation of an uncoupled panel that defines an internal void upon coupling. See ALJ Determination at 72; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999) (finding it appropriate, in the context of the patent at issue, to construe the same term to have two different meanings).

Finally, we are not persuaded to reverse the Commission’s finding of validity by Power Dekor’s citation to Purdue Pharma. That case was an appeal from a bench trial, wherein the district court held that the claims at issue were invalid for lack of adequate written description under § 112 ¶ 1. Thus, the question we considered was whether the district court clearly erred in concluding that the claims at issue lacked adequate written description. Purdue Pharma, 230 F.3d at 1323–24. Under the clear error standard, a court’s findings will not be overturned in the absence of a “definite and firm conviction” that a mistake has been made. Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1359 (Fed. Cir. 2003) (citation omitted). We ultimately held that the district court’s conclusion was not clearly erroneous. Purdue Pharma, 230 F.3d at 1323–24. Here, we review for substantial evidence the Commission’s conclusion that the clearance claims were not invalid for lack of adequate written description. Moreover, the later-filed claims in Purdue Pharma were directed at a specific numerical relationship between two variables (Cmax/C24 > 2). However, there was nothing in the disclosure suggesting that the Cmax/C24 ratio itself—regardless of the specifically claimed range of values for that ratio—was an important feature of the invention. Id. at 1326–27. Indeed, we found that the disclosure did not even motivate one to calculate Cmax/C24. Id. at 1327. Here, the importance of the later-claimed chambers was clearly described in the originally-filed disclosure. See ’486 patent col.6 ll. 14–17, col.7 ll.46–49, col.11 l.66–col.12 l.4. We are not persuaded by Purdue Pharma that the Commission’s decision regarding validity of the clearance claims in this case is unsupported by substantial evidence.
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