March 14, 2018

Written Description is Met by What the Disclosure Reasonably Conveys to Those Skilled in the Art

By Bryan K. Wheelock, Principal

In Hologic, Inc. v. Smith & Nephew, Inc., [2017-1389] (March 14, 2018), the Federal Circuit affirmed the Board’s determination that S&N’s earlier-filed PCT application has sufficient written description to make it a priority document instead of an invalidating obviousness reference to U.S. Patent No. 8,061,359.

The claim in dispute is directed to an endoscope “having a light guide permanently affixed therein.”  The PCT application from which the patent derived described a “fiber optics bundle.”  The Examiner found it did not, and rejected the claims as obvious over the prior PCT application.  However, the Board reversed, finding that the disclosure in the PCT provides sufficient written description support for the claimed “light guide,” entitling the patent to the priority date of the PCT.

The Federal Circuit said that to be entitled to the priority date of the earlier-filed PCT, S&N must show that the PCT discloses what the patent claims, according to the written description requirement of 35 U.S.C. §112.  Specifically, based on an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.  The Federal Circuit found that it did.

The Federal Circuit noted that substantial evidence showed that the PCT discloses a “light guide,” including the fact that the parties did not dispute that a “fiber optic bundle” is a type of light guide, and that various types of light guides were well-known in the art.  The Federal Circuit also rejected the argument that a light guide was not shown in the Figures, pointing out that “written description does not require that every claimed element be illustrated in the figures, particularly in predictable arts and where the element not depicted is conventional and not “necessary for the understanding of the subject matter sought to be patented.”

The Federal Circuit was satisfied that the Board applied the correct law and that substantial evidence supports the Board’s finding that the PCT provides sufficient written description disclosure of the claimed “first channel having a light guide permanently affixed therein.”