Written by: Mark Terry
What happens when you only disclose a larger range of values in the specification and later amend the claims to recite a smaller range of values encompassed by the larger range? Do you run into a 112 written description problem? That was the issue in today’s Ex Parte Moraes Barros (BPAI 2010-006399) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Florida Patent Attorney, I stay updated on the latest decisions of the BPAI, so as to provide my clients with the best representation on appeal.
Barros case, the Applicant claimed a chemical composition that
recited a range of values for a chemical. The problem is that the specification
only disclosed a larger range that encompassed the smaller range that was
recited. Consequently, the Patent Examiner rejected the smaller range under the
112 written description requirement because he believed there was no support
for the smaller range.
BPAI reasoned: “The original disclosure of a broader range may support the
recitation of a narrower range, even though the narrower range had not been
explicitly disclosed. In re Wertheim, 541 F.2d
257, 262-63 (CCPA 1976). However, as noted in Wertheim,
determination of questions relating to the written description requirement
depend upon the facts of each particular case (id.) … We
note that a range is a shorthand format for presenting information, where the
range is understood to encompass each discrete point.” In light of the
above, the BPAI agreed that the smaller range was adequately disclosed in the
specification and thus reversed the Examiner’s 112 rejection of the claims.
Lessons Learned: The educational moment in this case is the fact that, at least when it comes to 112 rejections based on the written description requirement, you need not disclose each and every permutation of a range of values when writing a chemical application. A well-crafted description of a range of values should suffice.