The 35 USC 112, First Paragraph, Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry

The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Yufa affirmed a Patent Examiner’s 35 U.S.C. 112, 1st paragraph, rejection. This was an interesting case for me, a Miami Patent Attorney, because it illustrated a type of rejection I don’t deal with much.

The case of Ex parte Yufa involved an apparatus for detecting particles using beams of light. At issue was a claim element that did not appear to be present in the original specification. The Board found the disputed claim element did not have support in the initial disclosure and therefore the 35 U.S.C. 112, 1st paragraph, rejection was affirmed.

The Appellant first made some weak arguments that certain ambiguous language in the original specification disclosed the disputed subject matter. This was quickly rejected by the Board. The Appellant then argued that the drawings disclosed the disputed matter. But absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Accordingly, in the absence of such a disclosure, the Board agreed that the disputed subject matter did not have support in the original disclosure such that the disclosure of the application did not reasonably convey to the artisan that the inventor had possession of the claimed subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).

Lessons Learned: The lesson here is that if you find yourself fighting a 35 U.S.C. 112, 1st paragraph, rejection, make sure you can point to solid language in the specification that clearly supports the disputed subject matter. Pointing to drawings may not pass muster.


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