Predictability and Criticality – Disclosure of Species Can Support Broader Genus
| August 5, 2019
IN RE: GLOBAL IP HOLDINGS LLC
July 5, 2019
Before Moore, Reyna, and Stoll
Summary
This precedential decision illustrates that disclosure of a species can support a broader genus claim. The test for sufficiency is whether the specification “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Predictability and criticality are relevant to the written description inquiry.
Background
Global IP Holdings LLC (Global) filed a reissue application seeking to broaden the claims of its U.S. Patent No. 8,690,233[1]. The reissue application sought to change the term “thermoplastic” to “plastic” in independent claims 1, 14 and 17. Claim 1 is representative:
1. A carpeted automotive vehicle load floor comprising:
a composite panel having first and second reinforced
thermoplastic skins and athermoplastic cellular core disposed between and bonded to the skins, the first skin having a top surface;a cover having top and bottom surfaces and spaced apart from the composite panel; and
a substantially continuous top covering layer bonded to the top surface of the panel and the top surface of the cover to at least partially form a carpeted load floor having a carpeted cover, wherein an intermediate portion of the top covering layer between the cover and the panel is not bonded to either the panel or the cover to form a living hinge which allows the carpeted cover to pivot between different use positions relative to the rest of the load floor.
The reissue declaration of the inventor explained that he is the inventor of over fifty U.S. patents in the field of plastic-molded products and that he was aware of the use of other plastics than thermoplastics (such as thermoset plastics) for composite panels with a cellular core.
The claims of the reissue application were rejected for failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. The Examiner noted that the specification only describes the skins and core being formed of thermoplastic materials. Thus, the Examiner considered the change to result in new matter.
On appeal to the Patent Trademark and Appeal Board (PTAB), Global argued that “because the type of plastic used is not critical to the invention and plastics other than thermoplastics were predictable options, the disclosure of thermoplastics (species) supports the claiming of plastics (genus).” The PTAB rejected these arguments, explaining that “regardless of the predictability of results of substituting alternatives, or the actual criticality of thermoplastics in the overall invention, [Global’s] Specification, as a whole, indicates to one of ordinary skill in the art that the inventors had possession only of the skins and core comprising specifically thermoplastic.”
Discussion
The CAFC reviewed the PTAB’s legal conclusions de novo and its fact finding for substantial evidence. The CAFC found that the PTAB legally erred in its analysis. In particular, the PTAB’s finding that the specification was insufficient “regardless of the predictability of results of substituting alternatives, or actual criticality of thermoplastics in the overall invention” conflicts with Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The CAFC explained that “the predictability of substituting generic plastics for thermoplastics in the skins and cellular cores of vehicle load floors is relevant to the written description inquiry.” In addition, criticality of an unclaimed limitation to the invention “can be relevant to the written description requirement.”
The CAFC pointed to In re Peters, 723 F.2d 891, 893–94 (Fed. Cir. 1983), in which the original claims were directed to a metal tip having a tapered shape. In a reissue application of that patent, the claims were amended to cover both tapered and non-tapered tips. The Board held that the broadened claims were not supported because the original disclosure only disclosed tapered tips. The CAFC disagreed, explaining that:
“[t]he broadened claims merely omit an unnecessary limitation that had restricted one element of the invention to the exact and non-critical shape disclosed in the original patent.” Id. We reasoned that the disclosed tip configuration was not critical because no prior art was overcome based on the tip shape and “one skilled in the art would readily understand that in practicing the invention it is unimportant whether the tips are tapered.”
Accordingly, the decision of the PTAB is vacated and remanded to address the relevant factors including predictability and criticality in order to determine whether the written description requirement has been satisfied.
Takeaways
Although a specification may not literally disclose a broader genus, disclosure of a species may support a broader genus, depending on the predictability and criticality of the feature.
Could Global seek an even broader claim by deleting “thermoplastic” in its entirety? Perhaps so, if deletion of thermoplastic is considered not critical to overcome prior art as in In re Peters. A review of the patent does show use of generic terms of “skin” and “cellular core” (column 5, lines 1-26 for example).
[1] A review of the file history shows that 15 patents issued from the same priority application no. 13/453,201.
