OVERVIEW:
In this case, Bimeda appeals a decision from the USPTO board of patent appeals and interferences, which affirmed the examiner’s rejection of the claims of US Patent No 6,506,400 for not meeting the requirements under 35 USC 112.
The ‘400 patent discuses methods for preventing the inflammation of udder tissues in cows. The ‘400 patent application describes a composition that employs a physical barrier within the teat canal of a cow to block the introduction of mastitis causing organisms without requiring the use of anti-infective such as antibiotics.
During re-examination of the ‘400 patent, Bimeda included new independent claims that included the limitation “wherein the teat seal canal had an aciflavine free formulation. Aciflavine is known as an antiseptic anti-infective agent that has been used to treat mastsis. The examiner rejected the new claims under 35 USC 112, first paragraph reasoning that “Acriflavine” is not mentioned in the disclosure of the ‘400 patent. The board affirmed the examiner’s rejections reasoning that the disclosure failed to demonstrate possession of a formulation that specifically excluded the acriflavine species of anti-infectiveness, and the disclosure failed to convey the full scope of what was affirmatively claimed by the claim, namely a formulation which excluded acriflavine but could include other anti-infective agents.
The court of appeals held the ‘400 patent disclosure is inconsistent with a claim which excludes acriflavine, but not the presence of other anti-infectives or antibiotics.” Specifically, the court reasoned that the ‘400 discloser did not meet the requirements of 35 USC 112, first paragraph because the ‘400 disclosure was inconsistent with the claim because although an exemplary formulation does not expressly exclude any particular class of anti-infective, one nevertheless comes away with the clear understanding that it cannot include antibiotics because it is describes as realizing results comparable with that achieved by antibiotic treatment.
PATENT ATTORNEY TAKE-A-WAYS:
1. When amending claims make sure that the claims amendments have literal support in the specification. If there is not literal support for the claim amendment in the specification, the applicant is opening themselves up for A) rejections under 35 USC 112, and B) claim construction during markman hearings. If the specification does not have literal support for a claim amendment, then during markman hearings the opposing party may be able to construct the claims much more narrowly or broadly then what they were meant, which could invalidate the patent even if granted.
2. More is typically less when writing claims. The less words that are included in claims, the less the examiner or a patent board claim can claim don’t meet 35 USC 112, first paragraph. Additionally, without this limitation in the claims it is likely that Bimeda’s resultant claim (as in their other independent claims) being a broader claim.
IN RE BIMEDA RESEARCH & DEVELOPMENT LIMITED