Anticipate This!™ | Patent and Trademark Law Blog

In re Paul Lew.

Posted in Opinion Commentary by Jake Ward on December 5, 2007

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 Cir. 2007, 07-1196, nonprecedential)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.


One Response

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  1. DC Patent Associate said, on January 3, 2008 at 9:47 pm

    Thank you for the detailed description of In re Paul Lew. I refer to it a couple of times in posts on my new blog.

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