Needless to Say, Originally Filed Claims Satisfy the Written Description Requirement

On May 13, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Ismagilov reversing an Examiner’s rejection of original claims for failing to comply with the written description requirement.

According to the Primary Examiner, claims 1–10, 11–20, and 21–30 of U.S. Patent Application No. 15/164,798 (“the ’798 application”) did not comply with the written description requirement because “the specification as originally filed contains no literal recitation of the features in the claimed invention and … applicant is relying on a combination of inherent features in the figures and descriptions thereof in the specification to show the claimed features.” Final Office Action, p. 3–4 (mailed Jan. 1, 2017).

While the Board acknowledged that “[a]lthough many original claims will satisfy the written description requirement, certain claims may not,” the Board emphasized that “[t]he Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims.” Ex parte Ismagilov, Appeal No. 2019-004109, at 4 (P.T.A.B. May 13, 2020) (non-precedential) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc) and In re Wertheim, 541 F.2d 257, 263 (CCPA 1976), respectively.

Dismissing the Examiner’s premise that “there is no literal support for the disputed language [in the claims]” the Board held that “given that claims 1–30 are originally-filed claims, the originally-filed claims satisfy the written description requirement for the disputed language.” Id. at 5. The Board further noted that the Examiner failed to present any evidence or reasoning for “why persons skilled in the art would not recognize a description of the invention defined by the claims in the original disclosure, taking into account the originally-filed claims.” Id. (emphasis added). Finally, the Board found “no instance where the Examiner addresses the originally-filed claims as evidence, or lack thereof, of written descriptive support.” Id. at 5–6. As such, the Board reversed the Examiner’s written description rejection.

Takeaways: Although Ariad Pharms recognizes that certain original claims may not satisfy the written description requirement, “[t]here is a presumption that an adequate written description of the claimed invention is present when the application is filed” and it is the Examiner’s burden to show otherwise. In re Wertheim, 541 F.2d 263; see also In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980) (original claims constitute their own description). Importantly, the lack of literal support in the specification is insufficient to carry this burden, especially when a skilled artisan would recognize a description of the invention from the original claims–either alone or in combination with the description and drawings.

Like Ex parte Wallero (discussed here), the Appellant in this case attempted to utilize the Pre-Appeal Brief Conference Pilot Program. As acknowledge by one USPTO presentation, the facts of this case were ideal for the Pre-Appeal Program because “[s]upport in the disclosure is clearly found contrary to a 112(a) rejection.” Nevertheless, a formal appeal was ultimately required. These two cases illustrate that the Pre-Appeal Program may not expedite prosecution or be an efficient use of an Applicant’s resources even when the rejections are clearly erroneous.

Judges: R. Delmendo, M. McManus, M. Cashion, Jr.