Written by Mark Terry
In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal.
Sony’s invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed “a main body with a plurality of substrates bonded together.” Representative claim 11 recited a first glass with a first substrate and a second glass with a second substrate. The Examiner rejected claim 11 under 35 U.S.C. sec. 112, first paragraph, arguing the written description did not disclose the second glass with the second substrate.
As the
BPAI stated: “Appellants appear to argue that because the original
Specification describes bonding a plurality of substrates where the base
material is silicon or glass, then it must follow that the original
Specification also describes bonding a ‘plurality of glass substrates,’ i.e., a
first glass substrate and a second glass substrate.”
The
BPAI decided against the Appellants, stating: “We agree with the Examiner that
the Specification discloses a device that is composed of only a glass substrate
and a silicon substrate … The Specification conveys with reasonable clarity to
a person of ordinary skill in the art only that the claimed micro
heat-transport device includes a silicon substrate … and a glass substrate …
Just because Appellants’ Specification describes bonding a plurality of
substrates of glass or silicon, we do not find that this by itself, without
more, conveys with reasonable clarity to a person of ordinary skill in the art
bonding a plurality of glass substrates. To follow Appellants’ logic would mean
that the Specification also describes bonding a plurality of silicon
substrates. We do not find that Appellants’ Specification conveys with
reasonable clarity such embodiments, i.e., bonding a plurality of glass
substrates or a plurality of silicon substrates. Rather, the Specification
conveys with reasonable clarity only bonding a glass substrate and a silicon
substrate.”
The
lesson learned here is the criteria for meeting the written description
requirement: conveying with reasonable clarity to a POSITA. To satisfy the
written description requirement, the disclosure must convey with reasonable
clarity to skilled artisans that the Appellants were in possession of the
claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Thus, when writing your written
description, be careful to make a list of all embodiments you are or may be
claiming in the future, and make sure it is disclosed with reasonable clarity
to a POSITA.