Category Archives: Written Description / Enablement

Why Did I Say That? Knowledge of Person of Ordinary Skill Gleaned from Applicant’s Specification

Author: Christopher B. McKinley
Editor: Jeff T. Watson

In In re Morsa, No. 15-1107 (Fed. Cir. Oct. 19, 2015), the Federal Circuit affirmed the PTAB’s determination that an anticipating reference was enabling based on statements made in Morsa’s specification regarding the knowledge of a person of ordinary skill.

The Court previously considered whether a product press release anticipated the claimed invention and remanded to the PTAB to consider whether the press release was sufficiently enabled to anticipate Morsa’s claims. The PTAB held that the reference was sufficiently enabled because one of ordinary skill in the art, having read the press release, would know how to perform Morsa’s invention. For support, the PTAB cited Morsa’s specification, which admitted that certain programming skills necessary to perform his invention were well-known in the art. Continue reading

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Getting Priorities Straight: Patents Have No Presumptive Entitlement to Priority Date of Provisional Applications

Editor: Lauren J. Dreyer

In Dynamic Drinkware v. National Graphics, No. 15-1214 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the Patent Trial and Appeal Board’s finding that IPR Petitioner Dynamic Drinkware failed to prove that its cited prior art U.S. patent was not entitled to its provisional application’s priority date.

At the PTAB, Patent Owner National Graphics argued that alleged 102(e) prior art submitted by Dynamic Drinkware in its IPR petition was not entitled to its provisional filing date, and instead only to its later non-provisional filing date because additional subject matter was added—additional subject matter used to attack National Graphics’ patent. Continue reading

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