Click above picture to visit

Tuesday, April 12, 2011

How Specific Should I Be With Written Descriptions in Patent Applications?

A recent United States Court of Appeals decision, Crown Packaging Technology, Inc. v Ball Metal Beverage Container Corporation, answers this question.  

In Crown, Ball Metal argued the Crown’s written description of US Patent Nos. 6,935,826 (‘826 patent’) and 6,848,875 (‘875 patent’) only covers driving a chuck outside
of the can end’s reinforcing bead (not inside, as well). Ball Metal stated Crown’s patent claims were not specific enough, stating Crown relied on the premise of saving metal more than the methods Crown used and the methods Crown did not use to make the product.

35 United States Code, section 112, states:
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

To determine sufficiency of the written description the court looks at whether the description is specific enough to allow “persons of ordinary skill in the art” to realize that the invention is
what the description claims it to be.

The court will consider whether the inventor had possession at the time the application was filed. Possession requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”

In the current case, Crown’s patents aim to correct two problems:

1. Reduce metal usage, and

2. Reduce scuffing to the can end wall.

The Court determined the correction of these two problems was specified in the written description as well as in the descriptive figures enough to indicate the methods Crown used to make the product.

In addition, the Court mentioned the Patent and Trademark Officer requested Crown
to file a divisional application and separate the method and product claims. To which the Court requires: “A patentee need only describe the product as claimed, and need not describe an unclaimed method of making the claimed product.” Therefore, Crown only needed to explain the method of making the product in the description, and did not need to anticipate methods Crown was not claiming in the patent to make the same product. 

Ms. Brittney Mestdagh created this case summary.