Claims Lack Written Description Support

Scott Daniels | July 27, 2009

The CAFC has affirmed a Patent Office ruling that the patent specification in the reexamination application, In re Reiffin Family Trust, failed to provide written description support for certain claims sought to add to U.S. Patent No. 5,694,604, rendering those claims unpatentable.

The patent claimed a computer system for efficient operation of computer compilation and human editing of source code. The claims included the limitation that the computer compiler performs lexical, syntactical and semantic analyses of the source code, and then emits an error message visible to the human when an error in the code is detected. The patentee included this disclosure in its original 1982 application and its later 1985 and 1990 applications, but omitted it from its 1994 application, and the disclosure does not appear in the ‘604 patent.

The patentee argued before the Patent Office that it should be allowed to amend its reexamination application to include the needed disclosure from the 1982, 1985 and 1990 applications, under the Litton Sys., Inc. v. Whirlpool Corp. The Patent Office rejected the patentee’s argument, stating that the patentee had indicated that the disclosure was not part of its invention by omitting it from the ‘604 patent application.

On appeal, the patentee asserted that Litton applied because 37 C.F.R. – 1.550 states that ex parte reexaminations should be conducted in the same manner as ordinary applications under 35 U.S.C. 1.104-1.116, and because 35 U.S.C. 305 states that reexamination “will be conducted according to the procedures established for initial examination.”

On an issue of first impression, the CAFC disagreed and affirmed the Patent Office’s written description rejection. The CAFC explained that once a patent issues, the patentee’s right to amend the specification and claims is limited – more specifically, the patentee is not permitted to add new matter. 35 U.S.C. 251. The CAFC added that when the 1994 application issued as the ‘604 patent, the patentee’s failure to maintain continuity of disclosure became uncorrectable.

Litton allows an applicant to amend its continuation-in-part application to include subject matter from an earlier application and obtain priority benefit of the filing date of the earlier application. 728 F.2d 1423, 1438 (Fed. Cir. 1984).

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