Examiner’s “Hypothetical” Does not Create a Written Description Problem

Scott Daniels | September 17, 2010

An inter partes reexamination, pending since November 2004, came to a favorable conclusion for the patentee today, with the PTO Board reversing the examiner on a written description issue.  Essentially the Board found in Light & Motion Industries, Inc. v. Sartek, LLC (95/000,060) that two claim limitations had written description support in a provisional application, thereby removing the examiner’s primary prior art reference.

The claimed invention was a portable high intensity lighting system for underwater use by divers.  The claims included the limitation that a “ballast container [be] potted with a material to eliminate vacant spaces therein so that said potting material is in direct contact with the interior of said ballast container” (emphasis added).  The examiner acknowledged the disclosure in the provisional application that the ballast container “has been filled with a material to eliminate vacant spaces within.”   But he then imagined a container lined with an insulator and then filled with potting material, so that the potting material would not be in direct contact with the interior of the container.

The Board disagreed, dismissing the examiner’s insulator-lined container as a “hypothetical scenario.” Written description, the Board explained, does not mean that the disclosure “guarantees” the claimed invention, but merely that one skilled in the art would recognize from the disclosure that the applicant possessed the invention.  A provisional application could provide written description support, even though it that “did not explicitly exclude or might generically encompass” additional embodiments outside the scope of the claims.

The examiner also found that the claim limitation of a “waterproof protective container” was not supported because the provisional application did not describe the container as “waterproof.”  The Board had little trouble with this second point, noting the examiner’s own finding that one would assume from the specification that the container was waterproof.

Provided that the reexamination requester does not appeal to the CAFC, the patentee may now ask that the stay of its District Court case – filed in 2003 – be lifted.

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