Written description found deficient where party referred to undesirable results

Bamberg v. Dalvey, No. 2015-1548 (Fed. Cir. Mar. 9, 2016)

In a consolidated interference proceeding, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) granting of a junior party patent’s motion that a senior party patent applicant’s claims for four patent applications were unpatentable for lack of written description as required by 35 U.S.C. § 112. The Federal Circuit determined that the PTAB had properly construed the claims and evidence supporting the PTAB’s finding that the senior party applicant had failed to provide an adequate written description.

The inventorship dispute centered around the interpretation of the term “white layer” that is present in special transfer paper and used in a method of ironing printed images onto dark textiles. The junior party patent’s specification disclosed a white layer that could melt at a number of different temperatures, which the PTAB interpreted to include temperatures both above and below 220°C based on construing the junior party patent’s specification.

The substantive evidence showed that the senior party’s specification did not support a white layer that melted below 220°C. In fact, the senior party applicant described that melting the white layer at temperatures below 220°C would create an “undesired” result. The Federal Circuit found that the inclusion of the undesired result in the specification did not provide an adequate written description to show possession of the claimed subject matter.

A copy of the opinion can be found here.