Case: In re Bimeda Research & Dev. Ltd., No. 2012-1420 (Fed. Cir. July 25, 2013) (Precedential). On appeal from B.P.A.I. Before Rader, Clevenger, and Prost.

Procedural Posture: Board of Patent Appeals and Interferences rejected claims to a method for sealing a bovine teat with an “acriflavine-free” formulation. The Board held that patent’s disclosure described the exclusion of a broad genus of antibiotics. Therefore claims for embodiments that exclude a particular type or species of antibiotic, while permitting others to be present, were not supported. The patentee appealed. CAFC affirmed.

  • Written Description: The patent’s disclosure supports the Board’s holding. The invention is described as a “non-antibiotic approach” to preventing mastitis in bovine teats and the Examples all present seal formulations that are “non-antibiotic.” The patent discloses that the invention presents “no risk of antibiotic residues after calving,” which can only be true if the formulation excludes all antibiotics. Therefore, the patent’s disclosure is inconsistent with a claim that excludes one type of antibiotic, but not other anti-infective or antibiotics, and does not adequately convey “possession” of the claim.

Rader, concurring:

  • Written Description: The Board’s analysis focused on the inclusion of a particular element in the claim, while in fact the claim at issue actually specifically excludes an element from the claimed formulation. Therefore the Board’s reasoning “places the patentee in a Catch-22: to satisfy the written description, the patentee must show possession of something it specifically claims it does not possess.”