IP Law Daily Deficient written description vitiated 4 patent applications
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Wednesday, March 9, 2016

Deficient written description vitiated 4 patent applications

By Mark Engstrom, J.D.

The Patent Trial and Appeal Board did not err in rejecting the claims in four patent applications, which disclosed a method of transferring printed images to dark-colored textiles by ironing over a specialty transfer paper, because the specifications failed to meet the written description requirement of 35 U.S.C. §112, the U.S. Court of Appeals for the Federal Circuit has ruled (Bamberg v. Dalvey, March 9, 2016, Hughes, T.). Because the Board properly construed the contested claims terms and substantial evidence supported the Board’s finding that the patent applicants did not meet the written description requirement, and because the Board’s denial of the applicants’ motion to amend was not an abuse of discretion, the decision of the Board was affirmed.

The Board consolidated multiple interference proceedings between patent applicants Ulf Bamberg, Peter Kummer, and Ilona Stiburek (collectively, “Bamberg”) and patent holders Jodi Dalvey and Nabil Nasser (collectively, “Dalvey”). The claims at issue originated in four Dalvey patents that claimed priority to a September 9, 1999 patent application. The claims disclosed a method of transferring printed images to dark-colored textiles by ironing over a specialty transfer paper.

To provoke an interference proceeding, Bamberg intentionally copied the Dalvey claims into four patent applications. The applications claimed priority to an international application that was filed under the Patent Cooperation Treaty (PCT) on June 1, 1999. To determine which party had priority of inventorship, the Board declared three interferences and declared Bamberg the senior party. As the junior party, Dalvey had to prove an earlier priority date by a preponderance of the evidence.

During the interference proceeding, Dalvey argued that Bamberg’s claims were unpatentable for lack of written description. According to Dalvey, the copied claims recited a “white layer” that melted at a wide range of temperatures and Bamberg’s specification disclosed a white layer that did not melt at ironing temperatures (i.e., below 220°C). Dalvey argued that Bamberg’s specification failed to meet the written description requirement because the specification did not disclose an invention in which the white layer melted at temperatures below 220°C.

The Board found that Bamberg failed to provide: (1) an adequate written description of a white layer that melted below 220°C and (2) a claim chart, as required by 37 C.F.R. §41.110(c)(2). Bamberg appealed.

Claim construction. Bamberg urged the circuit court to find that the Board had erred in its claim construction by improperly importing a functional limitation that required the white layer to melt below 220°C. According to Bamberg, the Board should have concluded that the white layer was simply “a white layer that remain[ed] opaque after application.”

The court noted that Dalvey’s specification defined “white layer” as “a layer on a transfer sheet positioned between a release layer and a receiving layer.” The court found no error in the Board’s conclusion that the broadest reasonable interpretation of “white layer” included a white layer that melted at temperatures both above and below 220°C.

Written description. Because the contested claims were properly construed to encompass a white layer that melted both above and below 220°C, Bamberg’s specification had to support a white layer that melted above and below 220°C. In the court’s view, substantial evidence supported the Board’s finding that Bamberg’s patent specifications did not meet the written description requirement.

According to the court, the white background layer in Bamberg’s specifications comprised permanently elastic plastics that were: (1) non-fusible at ironing temperatures (i.e., temperatures up to about 220°C) and (2) filled with white pigments that were similarly non-fusible up to about 220°C. The specifications clarified that the elastic plastics “must not melt at ironing temperatures” because the adhesive layer would include “an undesired mixture with impaired (adhesive and covering) properties.”

In Tronzo v. Biomet, Inc., 156 F.3d 1154 (1998), the Federal Circuit decided that an asserted priority to a parent patent could not be claimed because the written description had distinguished the prior art as “inferior.” Without the benefit of the asserted priority date, the claims were anticipated by intervening prior art.

Bamberg argued that the decision in Tronzo was distinguishable because Bamberg’s specification did not distinguish the prior art as “inferior”; it simply claimed that a melting white layer was “undesired.” According to Bamberg, the written description requirement was met in this case because Bamberg “had an embodiment that did melt.” Consequently, a reasonably skilled artisan would understand that a person “could have a layer that melted, but it may not be as good.”

The court disagreed. First, the court was not persuaded by Bamberg’s assertion that a skilled artisan would understand that an inventor could possesses something that it deemed undesirable, but not something that it deemed inferior. Further, the record evidence was insufficient to support Bamberg’s conclusion that a reasonably skilled artisan would understand that a person “could have a layer that melted, but it may not be as good.”

Because Bamberg had distinguished white layers that melted below 220°C as an “undesired” result, the court concluded that Bamberg did not possess a white layer that melted below 220°C.

For that reason, Bamberg’s specification failed to meet the written description requirement of 35 U.S.C. §112.

Motion to amend. The Board denied Bamberg’s motion to amend because Bamberg did not provide a claim chart, as required by 37 C.F.R. §41.110(c)(2). According to the Board, Bamberg’s failure to provide a claim chart improperly shifted to Dalvey the burden of establishing that the amended claim was not supported by an adequate written description.

The Federal Circuit found that the Board’s denial of Bamberg’s motion was not an abuse of discretion. Because Bamberg did not provide a claim chart—the principal means for determining whether Bamberg had satisfied its burden of establishing that the proposed amended claims were supported by an adequate written description—it failed to comply with the regulations governing interference proceedings.

The case is No. 2015-1548.

Attorneys: Stephen Holmes (Barlow, Josephs & Holmes, Ltd.) for Ulf Bamberg, Peter Kummer, and Ilona Stiburek. Devan V. Padmanabhan (Winthrop & Weinstine) for Jodi A. Dalvi and Nabil F. Nasser.

MainStory: TopStory Patent FedCirNews

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