Claims Not Supported by Sufficient Written Description
March 16, 2001
Last Month at the Federal Circuit - April 2001
Judges: Clevenger (author), Mayer, and Rader (dissenting)
In In re Jones, No. 00-1414 (Fed. Cir. Mar. 16, 2001) (nonprecedential decision), the Federal Circuit affirmed the Board’s decision sustaining a final rejection of certain claims of a patent application by Shedrick Jones concerning a dental implant. The claims had been rejected under 35 U.S.C. § 112, ¶ 1, for not meeting the written description requirement.
The Jones patent application shows the implant as roughly cylindrical with a rounded distal end. One attaches an artificial tooth to the proximal end of the implant that is located opposite the distal end. A helical channel runs from the distal end to the proximal end of the implant.
To install the implant, a hole is drilled into the jawbone and some of the removed bone is crushed and placed back into the hole. The implant is screwed into the hole, causing crushed bone particles to travel up the helical channel. The crushed bone encourages bone growth around the implant, causing the implant to be securely held over time.
The rejected independent claims recite a “flat distal end” limitation and a “helical channel having closed ends.” Jones had added both limitations in response to prior art rejections.
The Federal Circuit pointed out that neither limitation appears in the written text of the specification, the drawings, or the claims of the originally filed application.
Jones argued, however, that the “flat distal ends” limitation is inherently disclosed in the original application, which should include “reasonable variations” about which one skilled in the art would know. Rejecting this argument, the Court reasoned that considerable speculation is required to find that a person of ordinary skill in the art would understand that the contested limitations are disclosed.
Regarding the “helical channel having closed ends” limitation, Jones argued that it is inherently disclosed in the application because the application discloses a helical channel and, as a matter of logic, a helical channel must have ends that are either open or closed. The Court disagreed with Jones, agreeing instead with the Examiner that the application teaches away from the “helical channel having closed ends” limitation because the specification suggests that open ends are needed to distribute the crushed bone correctly during insertion of the implant.
Accordingly, the Federal Circuit concluded that substantial evidence supported the Board’s finding that claims 6 and 15 are unpatentable because they do not meet the written description requirement of 35 U.S.C. § 112, ¶ 1.
Judge Rader dissented, concluding that the Board had improperly speculated about the knowledge of one of ordinary skill in this art. He would have preferred to see the Board reject the claims as obvious given Jones’s concessions.