Results for 35 U.S.C. § 112
Claims that lack support from the written description are invalid under 35 U.S.C. § 112.
The Fed. Circuit affirms the District Court’s application of 35 U.S.C. § 112, 6th paragraph, despite an absence of ‘means’, and determines the claims to be indefinite due to a lack of sufficient structure in the disclosure.
The B.P.A.I. finds that claims directed to a system (reciting a memory and a processor configured to perform certain steps) and an article of manufacture (reciting a computer readable medium having computer readable program code embodied thereon) are not directed to patentable subject matter because the claims are not limited to a tangible practical application and are not limited so as to avoid encompassing substantially all practical applications of an algorithm.
Patentee cannot always satisfy written description requirement, in supporting expansive claim language, merely by clearly describing one embodiment of the claimed invention; specification of patent for method of digital compression using discreet wavelet transforms, which discloses single method of creating “seamless” DWT, does not entitle inventor to claim any and all means for achieving that objective.
In view of the specification and testimony that the inventor had not, at the time the patent application was filed, considered a particular structural arrangement encompassed by claims broadened during prosecution, the Federal Circuit invalidates these claims based on the written description requirement.
The Court considers the extent to which patent claims should be interpreted to cover embodiments that are not enabled by the specification.