During oral argument before the Fed. Cir. in Ariad v. Lilly, as reported by Patently-O, the government attorney was pressed for specific evidence that a separate WDR “is necessary for USPTO to perform its examination function”, e.g., that it serves a practical function. Chief Judge Michel was quoted thusly:
“I can’t remember ever seeing a patent office rejection that was based only on the failure of written description. I’m not saying there aren’t any, but the flow of cases that come through this court at three or four hundred a year, it is exceedingly rare that the patent office hangs its case on written description. I can’t remember a single case.”
The government’s attorney, Mr. Freeman, couldn’t either. To the contrary, those of us in the prep/pros trenches should be able to recall a few that made it to the Fed. Cir. from the Board, “based only on the failure of written description.” It took me five minutes in my not-very-well-organized WDR file to locate In re Wallach, 378 F.3d 1330 (Fed. Cir. 2004)(“Without amino acid sequence, or with only partial sequence, a nucleic acid molecule’s structures cannot be determined and the WDR is consequently not met.”); In re Alonso, 88 USPQ 1849 (Fed. Cir 2008)(Claim to use of any Mab to human neurofibrosarcoma to NFS based on one example fails WDR.) and Capon v. Eschhar and Dudas, 418 F.3d 1349 (Fed. Cir 2005)(Claims based on combining known gene fragments do not per se fail WDR. Remanded for evaluation of support for generic claims). In re Alton, 76 F.3d 1168 (Fed. Cir 1996) is bit more aged, but it is oft-cited for the proposition that it is error to disregard factual evidence relating to the adequacy of the WD in a specification. These are not obscure decisions – their impact is/was not “minuscule” and, to top off the irony tank, Judge Michel was on the panel that decided Alonso and Alton.
Can any one else add to this list (remember, failure to meet WDR must be the ONLY issue on appeal from the Board)?