Predictable Results from Unpredictable Arts

Jackrel Consulting, Inc.
Patent Agent, Expert Witness
and Consulting Services for
companies and individual
inventors.
Unpredictable Art
Patenting Chemical, Biological and Emerging Technologies

Overview
• MPEP 2164.03 “Relationship of Predictability of the Art and the Enablement
Requirement”
• Predictable vs. Unpredictable Technologies
• Chemical and Biological Technologies
• Emerging Technologies
2

MPEP 2164
The Enablement Requirement
“The enablement requirement refers to the requirement of 35 U.S.C. 112(a) or pre-AIA 35
U.S.C. 112, first paragraph that the specification describe how to make and how to use the
invention. The invention that one skilled in the art must be enabled to make and use is that
defined by the claim(s) of the particular application or patent.”
“The test of enablement is whether one reasonably skilled in the art could make or use the
invention from the disclosures in the patent coupled with information known in the art
without undue experimentation." United States v. Telectronics, Inc., 857 F.2d 778, 785, 8
USPQ2d 1217, 1223 (Fed. Cir. 1988)
3

MPEP 2164.03
Relationship of Predictability of the Art and the Enablement Requirement
• “The amount of guidance or direction needed to enable the invention is inversely
related to the amount of knowledge in the state of the art as well as the
predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA
1970).”
• “The ‘predictability or lack thereof’ in the art refers to the ability of one skilled in
the art to extrapolate the disclosed or known results to the claimed invention.”
• “[I]n the field of chemistry generally, there may be times when the well-known unpredictability
of chemical reactions will alone be enough to create a reasonable doubt as to the accuracy of a
particular broad statement put forward as enabling support for a claim.” In re Marzocchi, 439
F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971)
• “The scope of the required enablement varies inversely with the degree of
predictability involved, but even in unpredictable arts, a disclosure of every
operable species is not required.”
4

Unpredictable Art &
Emerging Technologies
• Chemical & Biological
• All variations of a claimed species must be enabled in the specification
• E.g., for chemical species with substitutable groups – the specification must “teach how
to make and use” all of the claimed species
• Emerging Technologies
• “New fields” (even if “predictable”) need more description to satisfy disclosure
obligations than more mature fields
• E.g., broad claims that cover different embodiments need to enable all of the variations
with sufficient description (without undue experimentation)
5

Predictable vs. Unpredictable
6
• In 1916 Einstein published his theory of
general relativity, stating that mass curves
space-time
• May 29, 1919, English scientists – led by
Sir Arthur Eddington – traveled to the
island of Príncipe off the west coast of
Africa to observe a total solar eclipse, and
confirmed that light from stars was bent
by the gravity of the sun
https://earthsky.org/human-world/may-29-
1919-solar-eclipse-einstein-relativity/

7
• In 1916, Einstein predicted the
existence of gravitational waves in
1916 in his general theory of relativity
• In 2016, LIGO, the Laser
Interferometer Gravitational Wave
Observatory, confirmed the first
observation of gravitational waves
https://www.ligo.caltech.edu/

8
• Organic molecules with biological
effects, such as psychoactive
effects or for treating ulcers
• In 1916, Einstein predicted the
existence of gravitational waves in
1916 in his general theory of relativity
• In 2016, LIGO, the Laser
Interferometer Gravitational Wave
Observatory, confirmed the first
observation of gravitational waves
https://www.ligo.caltech.edu/ https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4416422/

Chemical and Biological
• It can be difficult for a skilled person to predict which function or activity a
chemical or biological substance may possess
• Advantage: a newly found substance (and its use) is more likely to be deemed “not
obvious” to the skilled person, and hence, meet the statutory requirement of inventive
step (§ 103)
• Burden: when claiming a group of compounds, “providing one synthetic route and the
activity data of one compound may not be sufficient to support the assumption that all
claimed permutations of this compound can be synthesized and are active”
9
https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4416422/

• A generic structural formula does not necessarily inherently disclose the specific
compounds falling under the formula (otherwise no future chemistry inventions would be
possible since all conceivable new compounds fall under one known generic formula or
another).
10
Generic formula 1, Olanzapin (2), and Flumezapin (3)
https://media.bardehle.com/contentdocuments/broschures/IP_R
eport_2009_I.pdf

• German Federal Supreme
Court case (2008)
• “generic” 4′-(N-
methylpiperazinyl)-10H-
thieno[2,3-
b][1,5]benzodiazepine (1)
with the unspecified
residues R1 and R2
• General formula 1 does
not disclose 2
• Is compound 2 rendered
obvious by compound 3?
11
eport_2009_I.pdf
German Federal Patent Court originally revoked Eli Lilly’s patent on
Olanzapin on the basis of lack of novelty, but that decision was reversed
in a ground-breaking decision of the Federal Supreme Court in 2008.

• Is compound 2 rendered
obvious by compound 3?
• Activity data in the prior art
 a POSITA would
reasonably expect the
fluorine to enhance the
antipsychotic potency of the
compound
• Also, prior art had no
individualized compound
under the generic formula 1
that was not halogenated
•  POSITA had no reason or
incentive to modify
Flumezapin to compound 2
with no halogen
12
eport_2009_I.pdf
In this decision, the Federal Supreme Court stated that it will change
course, and that a general formula does not disclose the individual
compounds falling in its scope.

KSR
US Supreme Court, 2007
• there needs to be no explicit motivation in the prior art to modify a given teaching
to arrive at the claimed subject-matter
• when there is a need to solve a problem and there is a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue the
known options within his or her technical grasp
• if this leads to the claimed solution, the same is likely an obvious product of ordinary skill and
not the product of innovation
• underlying KSR is technology from predicable art (a mechanism for combining an
electronic sensor with an adjustable automobile pedal)
• All elements as such and their function were known from the art, and the result of the
combination was predictable and hence obvious.
13

KSR and Unpredictable Arts
• US Court of Appeal for the Federal
Circuit (CAFC) – there still needs to be
some reason (motivation) to modify a
starting compound in order to arrive at
the claimed compound.
• E.g., Lansoprazole (known from the
art) is structurally similar Rabeprazole
(claimed compound).
• However, the CAFC did not find any
motivation in the art to substitute the
active groups.
• The court stated: “The record shows no
discernible reason for a skilled artisan to
begin with Lansoprazole only to drop
the very feature, the fluorinated
substituent, that gave this
advantageous property [lipophilicity].”
14
Lansoprazole (known) Rabeprazole (claimed)
United States Court of Appeal for the Federal Circuit.
EISAI v. DR. REDDY’S LABORATORY and TEVA
PHARMACEUTICALS No. 07–1397 (Fed. Cir. July 21, 2008)

Unpredictable Arts
Detailed Description – Supporting Examples
• Chemical and Biological patents have to show that a class of compounds is
supported by a set of examples
• enabled over the whole claimed range
• in full possession of the invention on the filing date (e.g., actual or constructive
reduction to practice)
• the activity underlying the claimed compounds is also present over the whole range
claimed
15

Unpredictable Arts
Detailed Description – Supporting Examples
• AbbVie v. Janssen Biotech, CAFC (2014)
• invalidated a claim for a class of antibodies with no structural definition (only defined
functionally in terms of a certain disassociation constant to a binding site)
• “the claimed scope reaches beyond what the inventors have contributed to the art,” (since the
inventors did not provide structural examples of antibodies that fulfill the claimed function)
• Wyeth v. Abbott Laboratories CAFC (2013)
• invalidated a broad genus claim directed at Rapamycin and its derivatives
• the disclosure only supported one single compound within the scope of the claims (Sirolimus)
• the skilled person would have to synthesize and biologically evaluate thousands of compounds to see if
they have the claimed properties
16

Unpredictable Arts – What to do
17
Cover as much
breadth as possible
with examples and
data (synthesis and
activity)
Provide guidance in
the description how to
extrapolate from
these examples/data
to the remaining scope

• How much does a patent specification rely on the knowledge of a person of
ordinary skill in the art (POSITA) to provide support for certain claimed
embodiments?
• Can be tension between a company’s desire to protect valuable trade secrets
versus the need to provide an enabling disclosure
18

Emerging Technologies & Enablement
• Historically, predictable arts can be enabled by a single example
• Spectra-Physics, Inc. v. Coherent, Inc. (Fed. Cir. 1987)
• “New fields,” however, even if “predictable,” may not rely on knowledge of a
POSITA to satisfy disclosure obligations to the same extent to which inventions in
more mature fields may
• Automotive Technologies International v. BMW of North America (CAFC 2006)
• New guidance – can a POSITA make and use the entire claimed scope “without
undue experimentation”
• Trustees of Boston University v. Everlight Electronics Co., Ltd. (CAFC 2018)
• Guidelines on Examining Computer-Implemented Functional Claim Limitations for Compliance
with 35 U.S.C. 112 (USPTO, Jan 2019)
19
https://www.womblebonddickinson.com/us/insights/articles-and-
briefings/patenting-emerging-technologies-determining-how-far-
artisans-knowledge-goes

Automotive Technologies International v. BMW of North America, CAFC ‘06
• The CAFC found all claims invalid due to lack of enablement
• Crash sensing devices used to determine when air bags were deployed
• The specification of the patent (US 5,231,253) described an embodiment
of the device utilizing a mechanical sensor in considerable detail
• It also described utilizing an electronic sensor, but included less detail
and relied on the POSITA’s knowledge.
• At trial, Automotive Tech’s expert testified that POSITA could use off-the-
shelf components and well-known circuit design and programming
 When the patent application was filed in 1992, air bag deployment
sensors were arguably still an emerging technology.
20
https://www.womblebonddickinson.com/us/insights/articles-and-briefings/patenting-
emerging-technologies-determining-how-far-artisans-knowledge-goes
https://cafc.uscourts.gov/sites/default/files/opinions-orders/06-1013.pdf

Automotive Technologies International v. BMW of North America, CAFC ‘06
1. A side impact crash sensor for a vehicle having front and rear
wheels, said sensor comprising:
(a) a housing;
(b) a mass within said housing movable relative to said
housing in response to accelerations of said housing;
(c) means responsive to the motion of said mass upon
acceleration of said housing in excess of a predetermined
threshold value, for initiating an occupant protection
apparatus; and
(d) means for mounting said housing onto at least one of a
side door of the vehicle and a side of the vehicle between the
centers of the front and rear wheels, in such a position and a
direction as to sense an impact into the side of said vehicle.
21
https://cafc.uscourts.gov/sites/default/files/opinions-orders/06-1013.pdf

Sitrick vs Dreamworks, CAFC ‘08
• The CAFC found all claims invalid due to lack of enablement
• Integrating a user's audio signal or visual image into a pre-existing
video game or movie
• Defendants' two experts explained that a POSITA would not to be able
to take the teachings regarding video games and apply them to movies
 “The district court…in a detailed and thorough opinion granted
summary judgment in favor of Defendants because it found all asserted
claims of the '864 and '825 patents invalid for lack of enablement as to
movies. Sitrick v. Dreamworks, LLC, No. 03-4265 (N.D.Cal. July 21, 2006).
The district court did not reach the issue of whether the asserted claims
would have been enabled for video games. Id. at 73.”
22
https://www.courtlistener.com/opinion/210102/sitrick-v-dreamworks-llc/
FIG. 1A illustrates an embodiment of a user image
adapter interface system used in conjunction with
a video game apparatus, a user image storage
card, and a video game software or firmware card,
in accordance with the present invention

Sitrick vs Dreamworks, CAFC ‘08
54. A method of integrating a user voice image into a presentation
output, the method comprising the steps of:
sampling a user's voice;
analyzing the sampled user's voice to provide user voice parameter
data representative of the user voice image;
storing the user voice parameter data;
synthesizing and interjecting the user's voice into the presentation
output responsive to the user voice parameter data comprising the
step of associating a particular predefined character image within
the presentation with the user's voice so that when the particular
predefined character is speaking, the user voice parameter data is
input as a model to a voice synthesizer that effects the integration of
the user's voice into the presentation output as associated with the
predefined character image.
23
https://www.courtlistener.com/opinion/210102/sitrick-v-dreamworks-llc/
FIG. 1A illustrates an embodiment of a user image
adapter interface system used in conjunction with
a video game apparatus, a user image storage
card, and a video game software or firmware card,
in accordance with the present invention

Unpredictable Arts & Emerging
Technologies – What to do
24
Cover as much
breadth as possible
with examples and
data (synthesis and
activity)
Provide guidance in
the description how to
extrapolate from
these examples/data
to the remaining scope

Unpredictable Arts & Emerging
Technologies – What to do
25
Comprehensively
describe the
technology, even
those made from
components that
are “off-the-shelf”
Carefully consider
the scope of the
claim terms being
construed
Consider not filing
patents in certain
areas to avoid
disclosing trade
secrets

Jackrel Consulting, Inc.
Patent Agent, Expert Witness
and Consulting Services for
companies and individual
inventors.
Thank You
26

• “By classifying the field of Automotive Tech’s invention as a “new field”—despite using off-the-shelf components and well-known design
techniques—the Federal Circuit appears to have eviscerated its predictable arts doctrine from Spectra-Physics, Inc., leaving a significant question
of where the practitioner should draw the line on the amount of disclosure required in a patent specification for an invention in a new field versus
a predictable art.”
• “For entities more concerned with trade secret protection, it is important for the practitioner to keep in mind that questions of patent invention
enablement under 35 U.S.C. Section 112(a) are evaluated against “claimed” subject matter, with a focus on whether everythingwithin the scope
of each claim is enabled. If information to enable such claims cannot be easily reverse engineered and therefore has more value as a trade secret,
the practitioner, in close partnership with the inventor or other subject matter experts, should consider omitting claims which might require
disclosure of non-readily discernable information that would otherwise need to be disclosed in order to satisfy patent enablement standards.”
• “Finally, the lack of clarity on the extent to which a specification may rely on the artisan’s knowledge has important downstream effects on
strategies taken by patentees looking to assert patents. With contradictory and unclear guidance on when and to what degree apatent disclosure
may rely on the artisan’s knowledge to fill gaps in an otherwise non-enabling disclosure, patentees should carefully consider the scope of claim
terms being construed through the lens of a careful and thorough analysis of not only the level of detail in a patent’s specification, but also the
state of the art of the field of that invention at the time that the underlying patent application was first filed. “
• “For that reason, if, years after a patent application was originally filed, a patentee or its subject matter experts believes that there is a credible
risk that the field of the patented invention may be determined to be “new” at the time of the underlying patent application’s filing, the patentee
would benefit by either narrowing its claim term constructions and even not asserting claims that are found to have a less robust enabling
disclosure, in order to avoid an enablement challenge that ultimately invalidates the entire patent, as was the case in the Fed Circuit’s 2008
decision in Sitrick v. Dreamworks, LLC. “
27

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