Anticipate This!™ | Patent and Trademark Law Blog

Defendants Jon W. Dudas and the United States Patent and Trademark Office are permanently enjoined from implementing the Final Claims and Continuations Rules.

The opinion of Judge James C. Cacheris in the Eastern District of Virginia may be found here.  The order permanently enjoining the USPTO may be found here. 

GSK and Tafas brought suit against the USPTO to permanently enjoin the USPTO from enacting the USPTO’s final claims and continuations rules.  GSK and Tafas claimed that the rules were unlawful agency action under Section 706(2) of the APA and should be declared null and void.  The USPTO argued that the Final Rules were entirely lawful and that it should be permitted to go forward and implement the rules. More details on the background and specific rules changes may be found at our previous posts here, here, here, and here.  The Patent Docs have some exceptional background on the litigation, including copies of briefs filed, here.

In a well-written opinion, Judge James C. Cacheris rested his determination on the single dispositive issue of whether the USPTO is empowered to  establish the final claims and continuations rules under 35 U.S.C. § 2(b)(2), which allows the USPTO to “establish regulations, not inconsistent with law,” to “govern the conduct of proceedings in the Office.”

Judge Cacheris first noted that, even though the APA does not define a “substantive rule,” any rule that “affect[s] individual rights and obligations” has been deemed substantive by the courts.  With this understanding, Judge Cacheris found:

Though [the new contination rule) does not completely prohibit applicants from filing more than two continuation or continuation-in-part applications, because the USPTO intends to deny additional applications in almost all circumstances, . . . the “could not have been submitted” standard of the petition and showing requirement effectively imposes a hard limit on additional applications.  (Emphasis ours).

and 

[T]he ESD requirement changes existing law and alters the rights of applicants under the current statutory scheme by shifting the examination burden away from the USPTO and onto applicants. . . .  [T]he Federal Circuit has stated that applicants have “no duty to conduct a prior art search” and “no duty to disclose art of which an applicant could have been aware. . .” .  In addition, Sections 102 and 103 provide that “[a] person shall be entitled to a patent unless” the claimed invention lacks novelty or is obvious in view of the prior art, 35 U.S.C. §§ 102 and 103, and Section 131 states that the USPTO “shall cause an examination to be made of the application”. . . . The Federal Circuit has read these provisions as placing the burden of examination and the burden of proof to make a prima facie case of unpatentability on the USPTO.

thus 

The 2+1 Rule and the 5/25 Rule, which limit continuing applications, RCEs, and claims, and the ESD requirement, which shifts the examination burden onto applicants, constitute a drastic departure from the terms of the Patent Act as they are presently understood. By so departing, the Final Rules effect changes in GSK’s and Tafas’s existing rights and obligations.

Accordingly, the Judge Cacheris held: 

Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).

Hat tip to the Patent Prospector.

CAFC Orders Hearing En Banc of a BPAI Decision That Non-Machine-Implemented Business Methods Are Non-Patentable Subject Matter.

(Fed. Cir. 2008, 07-1130 order)

The following are the issues as stated in the CAFC’s sua sponte order relating to the Board of Patent Appeals and Interferences decision in Ex Parte Bilski (BPAI 2006):

The court by its own action grants a hearing en banc. The parties are requested to file supplemental briefs that should address the following questions:

(1)  Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?
(2)  What standard should govern in determining whether a process is patent-eligible subject matter under section 101?
(3)  Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?
(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?
(5) Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

Background on the case via InsideCounsel.com:

Bilski’s fight began more than 10 years ago when he submitted a patent application seeking exclusive rights to a method of using hedge contracts to reduce the risk that a commodity’s wholesale price might change. His process is pretty simple: When a commodity seller makes a sale to a consumer at one fixed price, he or she then makes a second set of hedging transactions at a second price.

There are no calculations for determining appropriate hedge prices, no use of computers to help implement the hedging.

The U.S. Patent and Trademark Office ruled in September 2006 that this “method” is merely an abstract idea, not patentable subject matter. A patentable “process,” the agency declared, must either transform matter or energy or use a machine to carry out specified steps. Bilski’s invention does neither.

Bilski appealed this ruling to the Federal Circuit in early 2007, and the legal battle began. According to many experts, the PTO is using this as a test case to narrow the type of business methods eligible for patents.

Claim 1 at issue from the Bilksi 08/833,892 patent application is reproduced below:

1. A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:
         (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;
        (b) identifying market participants for said commodity having a counter-risk position to said consumers; and
        (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

Dissent stating that the distinctions drawn between signals and storage media containing those signals are artificial at best. 

(Fed Cir. 2008, 06-1371o)

As stated in our original post on In Re Petrus A.C.M. Nuijten., the CAFC has previously held that a transitory, propagating signal cannot be patentable subject matter.  Petitions for a panel rehearing or a rehearing en banc at the CAFC were denied yesterday in a 9-3 decision, with strong a dissent by J. Linn (joined by J. Newman and J. Rader).  The dissenting justices opined as follows:

As I explained in my dissent from the panel opinion in this case, our decision conflicts with our own precedents as well as those of the Supreme Court. See In re Nuijten, 500 F.3d 1346, 1358 (Fed. Cir. 2007) (Linn, J., concurring-in-part and dissenting-in-part).  It conflicts with our own precedent because our predecessor court’s decision in In re Breslow, 616 F.2d 516 (C.C.P.A. 1980), forecloses the majority’s conclusion, see Nuijten, 500 F.3d at 1356, that something “transient” or “fleeting” cannot constitute a “manufacture” under 35 U.S.C. § 101.  And it conflicts with Supreme Court precedent because it ignores the Supreme Court’s analysis of how, in general terms, § 101 is to be construed.  As the Court discussed in Diamond v. Chakrabarty, patentable subject matter includes “anything under the sun that is made by man” except for certain enumerated exceptions: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” 447 U.S. 303, 309 (1980). The majority’s narrow construction of “manufacture” ignores this framework.

In addition, this case raises important questions about the relationship between § 101 and § 103. In this case, we affirm the PTO’s rejection of claims to a signal simpliciter, but the PTO has allowed a claim to a storage medium containing the very same signal, on the grounds that the storage medium is a manufacture that can be rejected, if at all, only under some provision other than § 101. In particular, the PTO considers the patentability of such claims under the “printed matter” doctrine of § 103. See In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). These distinctions make no practical sense and are poorly supported by precedent, which, to the contrary, requires a more holistic approach to the question of whether a claim is directed only to an unpatentable abstraction or whether it is directed to a patentable application of such an abstraction to an otherwise statutory invention. Cf. Parker v. Flook, 437 U.S. 584, 591 (1978) (”The process itself, not merely the mathematical algorithm, must be new and useful.”); cf. also In re Abele, 684 F.2d 902, 909 (C.C.P.A. 1982) (”As was the case in [Diamond v. ]Diehr[, 450 U.S. 174 (1981),] . . . the algorithm is but a part of the overall claimed process.”). The distinctions that are drawn between signals and storage media containing those signals would appear to apply equally to the distinctions between software and hardware and are artificial at best.

Further analysis by Prof. Crouch, Patent Prospector, and Zura’s 271 Blog.

If an initial phrase carries no definitive numerosity, an anaphoric phrase does not alter the meaning in the slightest.

(Fed. Cir. 2008, 07-1262)

Baldwin sued Siebert for infringement of Baldwin’s U.S. Pat. No. RE35,976 and U.S. Pat. No. 5,974,976, relating to  a device and method for cleaning a cylinder of a printing press.  On appeal from the district court (N.D. Ill.), the CAFC determined that the district court erred by construing the term ”a pre-soaked fabric roll” to mean “a singlepre-soaked fabric roll”, and by construing the phrase “reduced air content cleaning fabric” to mean “a fabric whose air content has been reduced by some method prior to being wound on a roll.”  The CAFC agreed, however, with the construction of the term “sealed sleeve” to mean “heat-sealed sleeve.”

In relation to the construction of the claim term “a pre-soaked fabric roll”, the CAFC first reiterated that the “court has repeatedly emphasized that an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”  The exceptions to this rule are extremely limited:  a patentee must “evince[ ] a clear intent” to limit “a” or “an” to “one.” 

There was no clear indication in the record of the patents that the applicant departed from the general rule for the article “a.”  The claim language, specification, and prosecution history of the patents at issue did not compel an exceptional reading of “a”.  Additionally, since the initial indefinite article (”a”) carried either a singular or plural meaning, any later reference to that same claim element in a singular form merely reflected the same potential plurality.  Or, as the opinion so eloquently states:

In grammatical terms, the instances of “said fabric roll” in the claim are anaphoric [definition] phrases, referring to the initial antecedent phrase.  Because the initial phrase carries no definitive numerosity, the anaphoric phrases do not alter that meaning in the slightest.

In relation to the construction of the phrase “sealed sleeve”, the court noted that it has “consistently recognized that the Patent Act prevents an applicant from adding new subject matter during the patent prosecution process.”  The record indicated that during prosecution the Examiner had refused to allow the applicants to amend the specification to remove references to “heat” as the way of sealing the sleeve because such amendment would have broadened the patent and introduced impermissible new matter not included in the initial disclosure.  Thus, the court was correct in refusing to broaden the term “sealed sleeve” to mean more than a “heat-sealed sleeve”.

Finally, the CAFC disagreed with the construction of the term “reduced air content cleaning fabric”.  The district court had apparently seized on the parties’ agreement that the term “reduced air content cleaning fabric” in the independent apparatus claim and the step ”reducing air content of a strip of cleaning fabric” in the independent method claim were substantially similar, to erroneously construe the limitations.  “Courts must generally take care to avoid reading process limitations into an apparatus claim.”  “Courts must [also] carefully avoid importing limitations from the specification into method claims.”  The claims themselves contained no basis to require air content reduction before winding.  Citing Phillips v. AWH, the CAFC noted that the “district court effectively imported limitations it saw in dependent claims into the independent claims, contrary to basic claim construction principles.”  Thus, the district court erred in limiting “reduced air content cleaning fabric” to “a fabric whose air content has been reduced by some method prior to being wound on a roll.” 

AFFIRMED-IN-PART, REVERSED-IN-PART, AND REMANDED.

If the geographical significance of a term is its primary significance, the geographical place is neither obscure nor remote, and applicant’s goods are from the geographical place, a public association of the goods with the place is presumed.

(TTAB 2007, U.S. Trademark Appn. No. 78/710,805)

Spirits of New Merced, LLC (the applicant) filed an application to register the mark YOSEMITE BEER for alcoholic beer in Class 32 with the word BEER disclaimed.   The trademark examining attorney refused registration under Section 2(e)(2) of the Trademark Act on the ground that the mark is primarily geographically descriptive of the goods.  Applicant appealed and the TTAB affirmed the refusal.

For a mark to be considered primarily geographically descriptive, two things must be shown. First, the mark’s primary significance is a generally known geographic location. Second, the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate from the place named in the mark. If these two conditions are met and the goods actually come from the place named by or in the mark, the mark is primarily geographically descriptive.

The applicant is a brewpub in Merced, California, which is approximately 80 miles from Yosemite National Park.  In the 2(e)(2) rejection, the Examining Attorney argued that “Yosemite” is a generally known place.  Applicant argued that there is no such place as “Yosemite”; that its beer does not originate from Yosemite National Park; and that there is no connection between beer and Yosemite National Park.  The Trademark Trial and Appeal Board (TTAB) sided with with the Examining Attorney and affirmed the refusal.

In its finding, the TTAB noted that as a first part of the “primary significance” test, a mark is not primarily geographic where the geographic meaning is minor, obscure, remote, or unconnected with the goods.  The applicant argued with little support that there is no place on earth named Yosemite or Yosemite, California.  Yosemite National Park, as the record supported, is a well known region and that “Yosemite” is a commonly used nickname or shorthand for Yosemite National Park.  Furthermore, the TTAB noted that “it is well settled that a recognized nickname or other informal name for a geographic location is considered the equivalent or the official or formal name for purposes of determining registrability of the geographic term”.  The TTAB also noted that the third-party applications and cancelled registrations cited by the applicant, and were a significant portion of the records submitted by the applicant, had no probative value on the issue of registrability.  The evidence, as determined by the TTAB, is only evidence of the fact that an application or registration was filed on a certain date.

In reviewing the second factor for a 2(e)(2) refusal, the TTAB noted that where the geographical significance of a term is its primary significance, and where the geographical place is neither obscure nor remote, a public association of the goods with the place may ordinarily be presumed from the fact that the applicant’s own goods come from the geographical place named in the mark.  The record showed that the city of Merced, where YOSEMITE BEER is produced, has a significant relationship to Yosemite National Park.  Merced has for years been known as the “Gateway to Yosemite”.  Accordingly, both prongs of the 2(e)(2) refusal were met and the refusal was affirmed.

The TTAB made two additional comments of significance. First, that the purpose of Section 2(e)(2) of the Act is not to punish a particular business for using a geographic name, but rather to leave geographic names free for all businesses operating in the same area to inform customers where their goods or services originate.  Second, and related to the first, is that the issue of 2(e)(2) refusals is not whether consumers will be “confused and deceived” but rather whether applicant has a right to exclude others from using the term to describe the geographic origin of their goods and services.

The use of the singular form “a” in conjunction with “comprising” and without narrowing language, such as “one and only one,” typically encompasses both singular and plural possibilities.

(Fed. Cir. 2007, 07-1125, nonprecedential)

On appeal to the CAFC, Hyperphrase argued that the district court (W.D. Wisc.) improperly granted a summary judgment of noninfringement of various Hyperphrase’s patents (collectively, “Patents-In-Suit”) by Google’s AutoLink and AdSense products.  The CAFC affirmed in part, vacated in part, and remanded.

AutoLink is an application that is integrated into web browsers.  When the user views a webpage, AutoLink scans the page’s content to identify certain strings of characters called “tokens.”   Google’s servers receive the tokens and returns a “redirect” URL to the user’s browser that enables the user to access relevant information from a different source.  AdSense is a service that coordinates advertiser content with contextually related webpages, typically targeted at corporate clients with a desire to advertise on the Internet.  Advertisers supply Google with online advertisements to display on the Internet via AdSense for a fee.  Adsense simultaneously conducts analyses of repeated words and combinations of words, and of keywords on the webpage that match a database, to select an advertisement to display.  At issue were the ways the Google products contextually link and present related information from disparate sources.

All but three of the patent claims asserted by Hypephrase included limitations requiring at least one “data reference,” “record reference,” “specifying reference,” or “reference.”  An explicit definition in one of the patents (and adopted by the district court for the Patents-In-Suit) stated:

A [data reference] is a unique phrase or word which may be used in a record to refer to another record or record segment. 

The district court held that meaning of the terms was a singular, specific record which the created link retrieves, or “one and only one record.”  Under this construction of the term “data reference” and the like, the district court held that AutoLink did not infringe the asserted claims because its tokens may link to any of multiple data records, and that AdSense did not infringe the asserted claims because it also lacks data references (plural).

In conducting its analysis, the CAFC first stated the axiom that “[i]t is well settled that a patentee may choose to be his own lexicographer and that definitions so provided will govern.”  However, the CAFC noted that the district court erred in going beyond the explicit definition to hold that a data reference may only refer to one and only one possible record.  The court has consistently held that the use of the singular form “a” in conjunction with “comprising” and without narrowing language, such as “one and only one,” typically encompasses both singular and plural possibilities. An intent to claim more narrowly and limit singular elements to one and only one such element can, of course, be expressed in the specification and/or prosecution history. But the patentee did not do so here.  Also, the district court’s claim construction would incorrectly excludes certain embodiments of the Hyperphrase specifications.  Thus, the district court erred in its claim construction, and the correct construction is that “a data reference” may refer to “one or more than one record.”

Summary judgement of non-infringement of patents where the term “a data reference” was not relied upon AFFIRMED .  Summary judgement VACATED and REMANDED in relation to the other patents for further proceedings in accordance with the opinion.

JW Note:  See also a related previous AT! post, titled Construction of “A”.

Range of “Controlled Amount” Narrowly Construed Based on Definition in the Specification; Majority Panel Ignores Contrary Disclosure and the Signal “For Example” in Relation to the Range.  

(Fed. Cir. 2007, 06-1633)

On appeal to the CAFC, Sinorgchem argued that a limited exclusion order by the International Trade Commission (“ITC”) and decision that Sinorgchem infringed four method claims of Flexys America’s U.S. Pat. Nos. 5,117,063 (“the ’063 patent”) and 5,608,111 (“the ’111 patent”) was improper.  A majority of a three-judge panel at the CAFC agreed with Sinorgchem and vacated the ITC decision.

The technology at issue relates to  a compound known as 6PPD, a rubber antidegradant used primarily in tires.  An intermediate compound, 4-aminodiphenylamine (4-ADPA) is used to make 6PPD.  Sinorgchem produces 4-ADPA and 6PPD in China and imports 6PPD for sale into the United States.

The process for making 4-ADPA includes a condensation reaction of aniline and nitrobenzene in the presence of a base and a  protic material (a proton donor, such as water).  Flexsys’ claimed process for producing 6PPD includes the step of: 

. . . reacting the aniline and nitrobenzene in a confined zone at suitable temperature, and in the presence of a suitable base and controlled amount of protic material to produce one or more 4-ADPA intermediates . . . . (Emphasis mine).

The central question was whether Sinorgchem’s method of producing 4-ADPA intermediates satisfied the above claim limitations and, in particular, whether the Sinorgchem’s methods used the controlled amount of protic material?  Sinorgchem argued that ”controlled amount of protic material” should be construed to be “up to about 4% water”.  Under this construction, Sinorgchem would not infringe because Sinorgchem’s method employs more than 4% water.  Flexsys argued that “controlled amount” means “that the amount of protic material should be controlled between an upper limit and a lower limit,” where the upper limit was “that amount beyond which the reaction between nitrobenzene and aniline is inhibited,” and the lower limit was “that amount below which the desired selectivity for 4-ADPA intermediates is not maintained.” Under Flexsys’ claim construction, the Sinorgchem process would infringe.

The majority panel found that the ITC’s determination of infringement was based on an erroneous construction of the term “controlled amount”, and that Sinorgchem did not literally infringe under a correct construction.  The majority relied on Flexsys’ specifications, which state:

A “controlled amount” of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when analine is utilized as the solvent.  (Emphasis mine).

The CAFC placed emphasis on the use of quotations marks around the term “controlled amount”, and use of the word “is”, as being indicative of the patentee acting as its own lexicographer in defining the term.  The majority disagreed with the ITC’s finding that the ” “up to about 4% H2O” language was used in the specification as an example and not a definition of the amount of water permitted,” stating that ”a definition set forth in the specification governs the meaning of the claims.”  The majority also disagreed with the ITC’s reliance on a Flexsys example where more than 10% water in a reaction was described.  Specifically, the majority opined:

Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history.

The majority panel of the CAFC also found it significant that the Flexsys example relied upon by the ITC does not expressly disclose the amount of water used in the reaction, and that the amount must instead be determined by a “complex calculation”.

Accordingly, the majority REVERSED AND REMANDED to the ITC to address doctrine of equivalents infringement in light of the holding that there was no literal infringement.

Circuit Judge Newman provided a strong DISSENT,  stating that the majority:

. . . made findings contrary to the detailed and unchallenged text of the patent specifications, and have construed the claims so that they exclude a major part of the invention described in the patents.

Specifically, Judge Newman recognized that:

. . . there was no disclaimer of the scope set forth in the patent specifications and claims; there is no prior art to limit the claims in the way selected by the panel majority; and there is no reason to insert an absolute numerical limit of “about 4%” protic material into the claims that do not contain a numerical limit, when the specifications of both patents demonstrate significantly higher percentages.

Nicely driving the absurdity of the majority decision home, Judge Newman further states:

It is not the judicial role to change the invention. Although the panel majority acknowledges that limits above 4% “could be found in the specification” and were so found by the Commission, the panel majority discards this undisputed fact. . . .

Thus my colleagues find “clear definitional language [of a 4% limit] set forth in the specification” although that number is in a sentence with the signal “for example,” and ignore the text and examples showing a higher range. These erroneous appellate findings of scientific fact directly contradict the findings of the Commission, made upon extensive and detailed evidence and argument on the content of the specifications, including the variables discussed and exemplified in the ‘063 and ‘111 patents. Instead, the panel majority selects the parts of the specifications that show water in the 4% range, and ignores the description and examples that show other amounts of water. . . .

Our appellate obligation is to impart consistency, predictability, and guidance to patent claiming, whereby the patent-user community can rely on a technologically correct and legally consistent interpretation of patent claims. The health of innovative technology requires confidence in objective rules of claim construction, and in uniform judicial application of the rules. The panel majority adds inconsistency and unpredictability by arbitrarily limiting the scope of the claimed invention in a way that conflicts with the teachings of the specifications and the knowledge in the field of the inventions. I respectfully dissent.

(Emphasis mine).

JW Note:  See also previous AT! discussions of Flexsys America v. Sinorgchem et al. here and here.

Use of the phrase “the invention” in combination with a specific element is “strong evidence” that the inventor intended his invention to be limited to embodiments containing the element.  

(Fed. Cir. 2007, 07-1196, nonprecedential)

Paul Lew and Jason Schiers (collectively “Lew”) appealed a decision of the BPAI sustaining a final rejection of claim 19 of patent application No. 10/658,143 (the ‘143 application”).  The CAFC affirmed.

The technology at issue was a “wheel hub with clutch,” primarily intended for bicycles, which allows the wheel connected to the hub to “free wheel” when no torque is applied (e.g., the bicycler is not pedaling), but which nearly instantly engages when torque is applied (e.g., the bicycler is pedaling).  According to Lew’s original specification, this torque transfer is facilitated “through a multitude of ball bearings.” 

During prosecution, Lew submitted Claim 19 and a substitute specification to overcome a statutory double patenting rejection.  The substitute specification was substantially the same as the original specification, except that the term “ball bearings” was replaced with “curved members,” and the term ”pockets” were replaced with “slots.” Notably, the term “curved members” was not previously used anywhere in the application.  The Examiner concluded that the amendments introduced new matter into the application that was not supported by the initial disclosure.  Lew argued that, because a “ball bearing” is inherently a curved object, Lew was entitled to claim the entire broader category of “curved objects.”  Thus, the issue before the CAFC was “whether Lew’s disclosure of only “ball bearings” is sufficient, in light of the initial disclosure, for a person of ordinary skill in the art to have determined that Lew was in possession, as of the initial filing date, of using any “curved member” in place of the ball bearings?”

Under 35 U.S.C. § 132 (no new matter) and 35 U.S.C. § 112, first paragraph (written description requirement), a new claim or other amendment to a specification after the original filing date must find support in the original specification.  The CAFC reiterated the long-held rule that an application is required to “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Although the claimed subject matter need not be described “in haec verba”, the issue rests on whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application.

The CAFC noted that there was no language in the original written description that would suggest that using “ball bearings” was only one specific embodiment of Lew’s invention.  In fact, each time the phrase “the invention” was described, including in the summary of the invention and the abstract, the invention was stated to include “ball bearings.”   The CAFC has consistently viewed such language as “strong evidence” that the inventor intended his invention to be limited to embodiments containing such an element.

Accordingly, the CAFC held that substantial evidence supported the Board’s determination that Lew’s amendments to replace the term “ball bearing” with the broader term “curved member” were not supported by the initial disclosure.

AFFIRMED.