Board written description decision vacated as conflicting with Ariad (predictability relevant to WD analysis)


In re: Global IP Holdings, LLC

Docket Nos. 2018-1426
Moore, Reyna, Stoll
July 5, 2019

Brief Summary: Board decision affirming rejection of broadening reissue claims for lacking written description vacated and remanded (e.g., Board’s statement “that the ‘233 patent’s specification was insufficient ‘regardless of the predictability of results…” conflicts with Ariad).

Summary: Global IP appealed the Board’s decision affirming the examiner’s rejection of its broadening reissue claims of its US 8,690,233 directed to automotive vehicle load floors for lacking written description (pre-AIA section 112, first paragraph (“WD”)). Global IP sought to amend its claims from reciting “thermoplastic skins” and “thermoplastic cellular core” to “plastic skins” and “plastic cellular core”, respectively. ‘233 inventor Mr. Preisler filed the required reissue oath/declaration “identifying the error relied on as the basis for the reissue”, noting that “at the time of the invention, he was aware of the use of plastics other than thermoplastics” and citing other patents and patent applications “disclosing the use of thermoset plastics (instead of thermoplastics)”. The examiner rejected the request as lacking WD and introducing new matter because “the specification indicates that the first and second skins and core are only described as being formed from thermoplastic materials and are not described as being formed generally from plastic materials”, and the Board affirmed this decision (e.g., “regardless of the predictability of results of substituting alternatives, or the actual criticality”, the specification “as a whole, indicates to one skilled in the art that the inventors had possession only of the skins and core comprising specifically thermoplastic”). The FC panel reviewed “the Board’s legal conclusions de novo and its fact findings for substantial evidence” (Belden, FC 2015; Consol. Edison, US 1938 (that which “a reasonable mind might accept…as sufficient to support the finding”)), explaining that “the test for sufficiency” of the WD “is whether the specification ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date’” (Ariad, FC 2010 (“persons of ordinary skill” would “recognize that the inventor ‘invented what is claimed’”, “level of detail required…varies depending on the…claims and on the complexity and predictability of the relevant technology”)). The FC panel concluded that the Board’s statement “that the ‘233 patent’s specification was insufficient ‘regardless of the predictability of results…” conflicts with Ariad and is erroneous (“the predictability…is relevant”). The FC panel also explained that “[i]n addition to predictability, we have held that the criticality or importance of an unclaimed limitation to the invention can be relevant to the written description inquiry” (In re Peters, FC 1983 (claimed tapered shape “not critical because no prior art was overcome based on the tip shape and ‘one skilled in the art would readily understand that in practicing the invention it is unimportant whether the tips are tapered…We see nothing in Ariad rejecting the analysis in Peters.”)) The Board’s decision was therefore vacated.

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