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.
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.
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.