Docket No. 2016-1770
LOURIE, O’MALLEY, TARANTO
November 20, 2017
Brief summary: DC finding of indefiniteness reversed and remanded (e.g., no “context-specific inquiry into whether particular functional language actually provides the required reasonable certainty”).
Summary: BASF appealed the “effective for catalyzing”/“effective to catalyze” claim limitation of US 8,524,185 directed to systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust stream indefinite and therefore invalidating all of the claims. This opinion explains that “the patent claims a partly-dual-layer arrangement of coatings on a substrate” containing “composition B” and an “undercoat containing ‘a material composition A effective for catalyzing NH3 oxidation’ (ammonia oxidation, or AMOx)” which prevents the escape of unreacted ammonia from the system. In finding indefiniteness, the DC wrote that “[e]ach claim fails to limit the ‘material composition A’ or the ‘material composition B’ to any specific materials” but instead uses “functional language, specifically ‘effective’, to purportedly define them.” “Moreover,” it wrote, “none of the claims recite a minimum level of function needed to meet this ‘effective’ limitation nor a particular measurement method to determine whether a composition is ‘effective’ enough to fall within the claims.” The FC panel explained that under Nautilus (US 2014), “a patent claim is indefinite if, when ‘read in light of the specification….and the prosecution history, [the claim] fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention”, noting that “‘[r]easonable certainty’ does not require ‘absolute or mathematical precision’” (Biosig, FC 2015). And “[n]othing inherent in the standard of ‘reasonable certainty’ precludes” functional claim language (Hill-Rom, FC 2014). The FC panel concluded that the DC’s “reasoning supplies no basis to answer” the question presented (e.g., no “context-specific inquiry into whether particular functional language actually provides the required reasonable certainty”). It also disagreed with the DC’s “mere observation of information not ‘recited’” and its “immediately” following conclusion that “without such information, a person of ordinary skill in the art could not determine which materials are within” the claimed compositions A and B, “and which are not” (“an inventor need not explain every detail because a patent is read by those of skill in the art” (Wellman, FC 2011); Dow, FC 2015; Halliburton, FC 2008; Honeywell, FC 2003 (in which “reference to specification or other intrinsic evidence or by reference to extrinsic evidence” “was central” to findings of indefiniteness). And it explained that “the inference of indefiniteness” cannot be properly drawn from Johnson’s expert witness testimony that “a practically limitless number of materials’ could catalyze SCR of NOx” (“breadth is not indefiniteness” (SmithKline, FC 2005)). It was not persuaded by Johnson’s view of the specification, finding that the “advance over the prior art is in the partly-dual-layer arrangement” and “not in the choices of materials” and, “in this context…the relevant skilled artisan would be informed by the specification’s numerous examples of qualifying compositions A and B….” And it did not find any extrinsic evidence supported the DC’s finding. It therefore reversed and remanded the DC decision.