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One Cannot Disclose a Forest, but Claim a Particular Tree

February 01, 2001

Decision icon Decision

Last Month at the Federal Circuit - March 2001

Matthew L. Whipple
[Judges: Schall (author), Clevenger, and Dyk]

In In re Wako Pure Chemical Industries Ltd., No. 00-1139 (Fed. Cir. Feb. 1, 2001) (nonprecedential decision), the Federal Circuit affirmed a rejection of several claims in a reexamination application of U.S. Patent No. 5,216,135 (“the ‘135 patent”).

The ‘135 patent is directed to compounds for use in manufacturing semiconductor devices, and claims diazodisulfone compounds useful as photosensitive materials. The claims recite these diazo disulfone compounds with specifically defined R1 and R2 groups, such as, “wherein R1 is a branched or cyclic alkyl group having 3 to 8 carbon atoms; and R2 is a straight-chained, branched or cyclic alkyl group having 1 to 8 carbon atoms.”

In the reexamination, the Board sustained the Examiner’s prior art rejection over U.S. Patent No. 5,338,641 issued to Pawlowski et al. (“the Pawlowski patent”). On appeal, Wako Pure Chemical Industries Ltd. (“Wako”) conceded that the Pawlowski patent disclosed the subject matter of the claims at issue, but argued that it was entitled to claim priority to an earlier Japanese patent application under 35 U.S.C. § 119. The Board rejected this argument, stating that Wako was not entitled to the priority date because the Japanese application lacked sufficient written description of the invention to satisfy the requirements of 35 U.S.C. § 112, ¶ 1.

The Japanese patent application discloses the same compounds found in the ‘135 patent, except that R1 and R2 were described differently. In the Japanese application, R1 and R2 could be chosen from one of seven categories, one of which categories was C1-10 straight-chain, branched, or cyclic alkyl groups, which was broad enough to include the R1 and R2 groups of the claims at issue.

Thus, the issue on appeal was whether the written description of the Japanese application, which disclosed seven possible categories for the R1 and R2 groups, could support a claim that recited only a narrow subset of one of those categories.

The Federal Circuit reviewed contrasting cases on this issue and concluded that this case was closest to precedent that had found a lack of support. In re Ruschig, 54 CCPA 1551(CCPA 1967). Because only a subset was claimed, and there was no guidance in the Japanese application to make the particular selections chosen by the Appellant, the Court ruled, the Japanese application lacked sufficient written description to support the claims of the ‘135 patent. This was despite the fact that “propyl” (indicating three carbon atoms) and “octyl” (indicating eight carbon atoms) were disclosed in the Japanese application. The Court quoted Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996), which stated that “just because a moiety is listed as one possible choice of one position does not mean that there is ipsis verbis support for every species or subgenus that chooses that moiety.” The Court concluded that “in a patent application, one cannot disclose a forest but then later claim a particular tree as the invention.” Wako, slip. op. at 7.