PTAB Strategies and Insights - July 2019: Federal Circuit Finds Reissue Application Fails to Meet Written Description Requirements

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Contact

Sterne, Kessler, Goldstein & Fox P.L.L.C.

In In re Global IP Holdings LLC, decided July 5, 2019, the Federal Circuit found the United States Patent and Trademark Office (USPTO) decision, which found the reissue claims unpatentable under the written description requirement of 35 U.S.C. § 112, first paragraph, was deficient. For example, the PTAB failed to properly consider predictability and criticality, based on the record evidence.

Global’s patent claimed carpeted automotive vehicle load floors having sandwich-type composite panels with cellular cores. Global had filed a reissue application seeking to replace the term “thermoplastic” with “plastic” in independent claims.

The Court stated that the PTAB should consider “the predictability of substituting generic plastics for thermoplastics in the skins and cellular cores of vehicle load floors [because it] is relevant to the written description inquiry” and that “in some cases, the criticality or importance of the expressly disclosed species may be relevant to whether an inventor had possession of a claimed genus.”

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations. Attorney Advertising.

© Sterne, Kessler, Goldstein & Fox P.L.L.C.

Written by:

Sterne, Kessler, Goldstein & Fox P.L.L.C.
Contact
more
less

PUBLISH YOUR CONTENT ON JD SUPRA NOW

  • Increased visibility
  • Actionable analytics
  • Ongoing guidance

Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide