Board Limits Claims to Specification Disclosure

Scott Daniels | June 23, 2010

Last week, the PTO Board picked up on the theme sounded earlier this year by the CAFC in Ariad Pharm. v. Eli Lilly, 598 F.3d 1336 (Fed. Cir. 2010), and repeated in a statement by Commissioner Kappos – “an adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries.”  Ariad 598 F.3d at 1349-50.  In Ex parte Research Tech., the Board affirmed the reexamination rejection of claims of U.S. Patent No. 5,726,772 as being anticipated by a 1992 WO publication .  The ‘772 patentee had asserted that it was entitled to benefit of its 1991 application, and that the WO publication was therefore not prior art. 

The Board disagreed, finding that the ‘772 claims for a “computer readable storage device” were generic in reciting the production of halftoned color images, whereas the 1991 application was limited to the use of a “blue-noise mask.”  The Board explained that

the detailed description does not appear to have discussed an embodiment without a blue-noise mask; nor does it indicate that other embodiments without a blue-noise mask were contemplated.

The Board also cited the title and the claims of the 1991 application as indicating that only embodiments with a blue-noise mask were contemplated.  The Board concluded that the pending ‘772 patent claims were not entitled to benefit of the 1991 application filing date and that the 1992 WO publication was therefore intervening prior art that anticipated the claims.

The Board’s treatment of the case is encouraging in that it suggests that it will not allow applicants/patentees to claim, through generic claim terminology, more than what they had invented.

The Request was filed in 2004 by Microsoft.  Microsoft had been sued in 2001 by Research Corporation for infringement of the ‘772 claims.

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