Fed Circuit Watch: Written Description From Earlier-Filed PCT with Species Claim Sufficient Support for Later-Filed Genus Claim

102 112 fed circuit watch patent PCT pre-AIA priority Written Description

On March 14, 2018, the Court of Appeals for the Federal Circuit ruled on Hologic, Inc. v. Smith & Nephew, Inc.,[1] which deals with many areas in patents, including foreign applications, priority claims, 35 U.S.C. §103, 35 U.S.C. §112, and pre-AIA treatment for examination.  This case was heard before a panel composing of Judges Newman, Wallach, and Stoll.

The facts are as follows.

Hologic, Inc. requested inter partes reexamination of U.S. Patent No. 8,061,359 (‘359), owned by Smith & Nephew, Inc.  The ‘359 patent is directed to method for endoscopic removal of uterine tissue.  The ‘359 patent also claims priority to an earlier-filed PCT application, WO 99/11184, by the same inventor, Mark Hans Emanuel (“Emanuel PCT”).  Specifically, the ‘359 patent was a divisional of U.S. Patent No. 7,249,602 (‘602), which was a national phase application under 35 U.S.C. §371(c)[2] of the Emanuel PCT.  The three share the same specifications, with the exception of the following amendment to claim 1 made in the ‘359 prosecution:

A connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundle which provides for lighting at the end of lens 13.

(Emphasis added.)

Claim 1 was deemed representative:

  1. A method for removal of tissue from a uterus, comprising:

inserting a distal region of an endoscope into said uterus, the endoscope including a valve and an elongated member defining discrete first and second channels extending from a proximal region of the elongated member to the distal region, the second channel having a proximal end in communication with the valve such tat fluid from the valve is able to flow into and through the second channel to the uterus, and the first channel having a light guide permanently affixed therein and being sealed from the second channel to prevent fluid from the valve from entering the uterus through the first channel . . . .

The drawings illustrate the claimed invention, showing a viewing channel 6 with a lens 13 which can connect to a light source 8.  Figure 2 shows the light source 8 below:

Source: U.S. Patent No. 8,061,359, Nov. 22, 2011, to Mark Hans Emanuel

Further, Figure 3 shows the cut-away view of the endoscope, with the viewing channel 6 and lens 13.

Source: U.S. Patent No. 8,061,359, Nov. 22, 2011, to Mark Hans Emanuel

During prosecution of the reexamination proceeding, the Examiner took issue to the priority claim[3] because the written description of the Emanuel PCT only disclosed the species “fibre optics bundle” and did not provide adequate disclosure for the genus “light guides.”  If the priority claim was defective, then the Emanuel PCT, with a publication date of March 11, 1999, would not be available as a priority application for ‘359, and ‘359 would, therefore, have a priority date of July 20, 2007.  Consequently, under the old rules of pre-AIA 35 U.S.C. §102(b), the Emanuel PCT would be an invalidating prior art against the ‘359 patent.[4]  The Examiner then rejected the ‘359 claims 1-3 and 5-7 as obvious over the Emanuel PCT in combination with a secondary reference.  The PTAB reversed the Examiner’s rejection, finding that the Emanuel PCT was, indeed, a priority document, and therefore, not an invalidating prior art.  The issue on appeal was whether there was enough written description in the Emanuel PCT to support “light guide” as claimed in the ‘359 patent.

The law of written description as it relates to a claim of priority and novelty.  Whether an earlier-filed application possesses a sufficient written description to qualify as a priority document, or otherwise, an invalidating prior art is an issue of fact which the courts review for substantial evidence.[5]  Further, the written description is determined by the “four corners” test, which is:

an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art [POSITA] . . . , the specification must describe an invention understandable to the skilled artisan and show that the inventor actually invented the invention claimed.[6]

Although it is true that the Emanuel PCT did not disclose “light guide” explicitly, it did disclose “fibre optics bundle” specifically.  And, it was undisputed between the parties of the fact that “fibre optics bundle” was a type of light guide.  So, therefore, it is implicit that the Emanuel PCT disclosed “light guide” sufficient to support a written description for “light guide” in the ‘359 patent.  In other words, there was enough substantial evidence that the Emanuel PCT reasonably conveyed to a POSITA that the inventor was in possession of “light guide.”

The panel further elucidated:

The written description does not require that every claimed element be illustrated in the figures, particularly in predictable arts and where the element not depicted is conventional and not “necessary for the understanding of the subject matter sought to be patented.”

To further support the intrinsic evidence in support of written description, the panel noted the extrinsic evidence supported the term “permanently affixed.”  The two expert witnesses, both qualified POSITAs, testified that the prior art described endoscopes with generic “permanently affixed” light guides.

The Federal Circuit affirmed the decision of the PTAB.

[1] ___F.3d___ (Fed. Cir. 2018), aff’g Hologic, Inc. v. Smith & Nephew, Inc., No. 2016-006894, 2016 WL 6216657 (P.T.A.B. Oct. 21, 2016).

[2] See also MPEP 1893.

[3] See MPEP 211 and 37 C.F.R. §1.78(d).

[4] See MPEP 2133: “Applicant’s own work which was available to the public before the grace period may be used in a pre-AIA 35 U.S.C. 102(b) rejection,” and “a pre-AIA 35 U.S.C. 102(b) rejection creates a statutory bar to patentability of the rejected claims.”

[5] See 35 U.S.C. §§102(b), 112(a), and 120.

[6] See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).