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« Barbaro Technologies, LLC v. Niantic, Inc. (N.D. Cal. 2020) | Main | 11th Annual Ethics in the Practice of IP Law Seminar »

May 31, 2020


One good observation here is worth repeating [and was also noted some years ago by at least one Fed. Cir. judge]: that there has been insufficient judicial interpretation or application of §112(a). Until recently it was rarely or inadequately applied in the PTO. It has also been asserted as one factor in the D.C. overuse of 101 instead. And, it cannot even be raised in an IPR except for substitute claims.

Of course, I could check it out myself but it strikes me it is quicker and easier to ask my question here. To me, it seems decisive.

I read above, that:

"The claims expressly recited the USP 2 Paddle Method, but Actavis argued that the specification disclosed only the UPS 1 Basket Method"

So is it so, that in the patent application as filed ALL the claims were limited to the UPS1 method, ie NO claim generic to UPS1 and USP2? I mean, if the original disclosure was of generic paddle or basket, that's a bit different from a disclosure as filed of exclusively basket, with NO suggestion anywhere at all in the application as filed of any method (such as paddle) other than the basket method.

Interesting for Europeans like me is (of course) the overlap between WD in the USA and "added matter" under the EPC. I had supposed that under FItF, the WD requirement would get progressively stricter but I don't see it yet.


I just do not see what you think it is that you see in regards to New Matter.

You are aware of course that the US has its own 'No New Matter' rule that applies every bit as well as the European analog.

Are you trying to make a different point than mere 'no new matter?' It is unclear from what you post.

Max: the patent uses the word "basket" exactly once, in Example 2 and recites only the paddle method in the claims.

I don't think the question is one of added matter because basket or paddle the limitation is merely a way of characterizing how the claimed formulation is made (and one step of that preparation method).

Which was the basis for the majority's decision: if the written description requirement was intended to ensure that the applicant possessed the invention at the time the application was filed, and using either basket or paddle provides the same formulation, then isn't it putting form over substance to make a distinction?

Chief Judge Prost disagreed.

I think the Supreme Court made the right decision. This is (in many ways) much ado about very little and will be cabined to its facts. This is not the hill to die on for written description.

Thanks, both, for those replies. I see that I failed to make my question clear enough. I'll try again.

As opposed to the issued patent, let's look at the content of the patent application on its filing date. It will have a specification and a set of claims. In the specification, you report, there is Example 2 and in that Example the word "basket" appears.

Now to my question.

As to the claims, did they recite the paddle method already on the filing date of the application, or was the limitation to the paddle method added during prosecution?

If paddle was in the claims from the get go, then I can readily see that the WD attack on validity is unconvincing. But if it was added during prosecution, to an application as filed that recited no paddles and only one basket, then the WD attack on validity strikes me as weighty, more substance than mere form.

From your comments, Kevin, I presume that paddle was already in there at the filing date. In which case then, yes, form over substance.

The issue what prosecution amendments are possible is one that generates much trans-Atlantic correspondence between those who prosecute applications at Patent Offices.

"The issue what prosecution amendments are possible..."

"see that I failed to make my question clear enough. I'll try again."

You are aware of course that the US has its own 'No New Matter' rule that applies every bit as well as the European analog.

I am still not seeing what point you are trying to make - are you not understanding the reply to you?

Kevin, anon, I have now myself had a look at the US A publication and the equivalent case at the EPO EP-B-2061448. The issued claim at the EPO recites the dissolution measurement method of para [0044] of the application as filed. I continue to wonder though why claim 11 of the US '195 patent had to include the word "paddle", nowhere to be found in the application as filed.

If the restriction to "paddle" was in order to achieve patentability over the art, that for me is tantamount to a claim to an invention which Applicant, at the filing date, did not already possess.

Conversely, if "paddle" is implicit in the method stated explicitly at para [0044], that would indeed suggest that Applicant was in possession at the filing date. But, in that case, why insert into the claim the word "paddle"? What other reason could there be, other to get to patentability over the art?


You ask a question that is easily answered, since the point at question is a published patent with its full prosecution history for all to read (it's called Public PAIR).

As to what POINT it is that you think that you might be making by making an intonation (what other reason?) you merely appear f00lish.

For THIS case, the amendment was made in a reply to an Office Action, but as you might gather from the reasoning provided below, this does NOT appear to be any attempt to "get patentability over the art." Certainly, the applicant plainly believed that there was NOTHING involved in the actual amendment that was needed in order to over the art, and that the art of record was simply deficient in and of itself.

The quote is part of the reply on 4/14/2014:

"The Examiner requires additional clarification on the "standard dissolution test" recited in the claims. Applicants' representatives agree to incorporate the relevant disclosure of "standard dissolution test" from the specification into the corresponding claims. Applicants' representatives maintained that Weber fails to disclose any specific sustained in the Klassen Declaration should be considered.

Note here that the amendment that you point to is basically ADMITTED prior art and has nothing to do whatsoever with patentability over the art.

Rather than throw fecal matter at the wall (while you continue to NOT address my prior questions put to you), please do at least a modest investigation to set up your 'question.'

Well thanks, anon, for explaining how "paddle" got into the claim during prosecution.

Same objection raised in both USPTO and EPO, but claim amendment in response different.

Given that the USPTO amendment to "paddle" opened up the opportunity to run a WD argument, post-issue, whereas the EPO amendment would not, I wonder whether, given another chance, the attorney that did the prosecution at the USPTO would have avoided introducing that word "paddle" into the claim. There was no need for it at all, was there?


The APPARENT need was based on the US Examiner.

Clearly here the case shows the applicant being worn down.

And no - there is NO (legitimate) WD issue - regardless of the "opportunity," as ANY amendment provides the basis of the "opportunity." Are you suggesting that applicants NEVER amend because of this ")h Noes" opportunity issue?

(but that 'wearing down' or anything remotely pro-applicant does not fit any narrative that you would espouse, does it?)

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