Recent Court Decisions Affecting PTO Patent Practice

1996 – Article


by Steven E. Lipman 1, Frank J. West 1

Best Mode

Great Northern Corp. v. Henry Molden Prods., Inc., 39 USPQ2d 1997 (Fed. Cir. 1996)

Diamond-shaped indentations that provide strength to molded pulp member for supporting rolls of material relate to best mode since claimed support member could not be provided without indentations, which are thus critical to practicing the claimed invention, rather than simply a commercial consideration

Robotic Vision Systems, Inc. v. View Eng'g, Inc., 39 USPQ2d 1167 (C.D.Cal. 1996)

Best mode lacking where non-disclosed software is only way known at filing for carrying out patented method

United States Gypsum Co. v. National Gypsum Co., 37 USPQ2d 1388 (Fed. Cir. 1996)

Best mode lacking for failure to disclose chemical composition, its method of manufacture, or its supplier/trade name, that inventor believed was "substantially better" than others with which he had experimented and essential to improving claimed invention, and was not selected simply as a matter of commercial expediency

Claim Interpretation

Amhil Enterprises, Ltd. v. Wawa, Inc., 38 USPQ2d 1471 (Fed. Cir. 1996)

"Substantially vertical" here means to deviate only slightly, if at all, from vertical, since patentee used "substantially vertical" and "vertical" interchangeably in specification and during prosecution, and claims would be invalid if construed otherwise

Athletic Alternatives, Inc. v. Prince Mfg., Inc., 37 USPQ2d 1365 (Fed. Cir. 1996)

If intrinsic evidence shows equal choice between broader and narrower meaning of claimed phrase "varies between," and there is enabling disclosure that indicates patentee is at least entitled to a claim with narrower meaning, notice function of claims best served by adopting the narrower meaning

Fromson v. Anitec Printing Plates, Inc., 39 USPQ2d 1727 (D.Mass. 1996)

"Anodization" here means electrolytically formed, adherent, porous oxide coating thicker than native oxide to protect against problems addressed by patent

General American Transportation Corp. v. Cryo-Trans, Inc., 39 USPQ2d 1801 (Fed. Cir. 1996)

"Adjacent" wall here means nearest wall

Markman v. Westwiew Instruments, Inc., 38 USPQ2d 1461 (S. Ct. 1996)

Maxwell v. J. Baker, Inc., 39 USPQ2d 1001 (Fed. Cir. 1996)

"Fastening tab" here means tab separate from inside shoe lining

Rolite, Inc. v. Wheelabrator Tech., Inc., 37 USPQ2d 1269 (E.D.Pa. 1995)

"Comminution" here means crushing, pulverizing, or grinding to reduce particle size through force

Texas Instruments, Inc. v. Cypress Semiconductor Corp., 39 USPQ2d 1492 (Fed. Cir. 1996)

"Conductor" here in method of encapsulating semiconductor device in plastic means electrical lead that extends from inside package to outside and connects semiconductor device to external circuit

Tsakanikas Global Technologies, Inc. v. Uniden America Corp., 39 USPQ2d 1795 (D.Md. 1996)

"Telephone set" here means device that transmits and receives sounds, not just a telephone keypad
"Supervising signals" here means signals produced by a telephone set and sent through a telephone line

Ultradent Prods, Inc. v. Life-Like Cosmetics, Inc., 39 USPQ2d 1969 (D.Utah 1996)

"Carboxypolymethylene in the range from about 3.5% to about 12% by weight" here defined as slightly acidic vinyl polymer with active carboxyl groups in accordance with specification
Chemical composition claim, as opposed to process claim, must recite components of the composition, not the ingredients to be combined to make the composition, if claim is to be directed to a composition of specific proportions of particular ingredients

Vitronics Corp. v. Conceptronic, Inc., 39 USPQ2d 1573 (Fed. Cir. 1996)

Expert testimony and other extrinsic evidence may be relied upon only in rare event that intrinsic patent documents, taken as a whole, are insufficient to enable Court to construe disputed claim term, as compared to an understanding of the underlying technology
Even then, prior art documents and dictionaries are more reliable guides than opinion testimony on claim construction


Graco Children's Prods., Inc. v. Century Prods, Co., Inc., 38 USPQ2d 1331 (E.D.Pa. 1996)

Inventor must conceive of every feature of invention at one point in time that was definite and permanent enough for one skilled in the art to understand it, i.e., a complete mental picture of the particular solution to the problem at hand

Reduction to Practice

Schendel v. Curtis, 38 USPQ2d 1743 (Fed. Cir. 1996)

Junior party failed to provide direct evidence that he prepared fusion protein having structure and particular biological activity data required by the count


Reitz v. Inoue, 39 USPQ2d 1838 (Bd. Pat. App. & Int. 1996)

Senior party entitled to benefit of Japanese filing date despite inconsistencies between inventive entities on Japanese and U.S. applications because of liberalized 1984 amendments to 35 U.S.C. ¶116, 37 C.F.R. ¶1,110, and MPEP ¶201.15 re joint inventorship


In re Borden, 39 USPQ2d 1524 (Fed. Cir. 1996)

Prior art designs may be combined for obviousness only when they are "so related that the appearance of certain ornamental features in one would suggest the application of those features to the other"
However, there must first be a basic design reference in the prior art whose "design characteristics ... are basically the same as the claimed design"


Robotic Vision Systems, Inc. v. View Eng'g., Inc., 39 USPQ2d 1167 (C.D.Cal. 1996)

Enablement satisfied where missing software within skill of ordinary programmer

PPG Indus., Inc. v. Guardian Indus, Corp., 37 USPQ2d 1618 (Fed. Cir. 1996)

Enablement satisfied even though calculation errors and statements in specification, because errors could be discovered without "undue experimentation" in view of specification's provision of guidance in selecting operating parameters that would yield claimed result


PPG Indus., Inc. v. Guardian Indus., Corp., 37 USPQ2d 1618 (Fed. Cir. 1996)

Claims precise in quantifying the essential ingredients and transmittance tolerances of the claimed compositions


Greenberg v. Ethicon Endo Surgery, Inc., 39 USPQ2d 1783 (Fed. Cir. 1996)

Use of word "means" not necessary to invoke 35 U.S.C. ¶112, para. 6, but here absence of word fatal

York Prods, Inc. v. Central Tractor Farm & Family Center, 40 USPQ2d 1619 (Fed. Cir. 1996)

"Means" language must be linked to an identified function, otherwise predominantly structural "means" clause does not invoke 35 U.S.C. ¶112, para. 6


Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 38 USPQ2d 1300 (W.D.Ark. 1996)

Objective evidence re secondary considerations not enough where those familiar with prior art were fully aware of problems and their solutions

In re Brouwer, 37 USPQ2d 1663 (Fed. Cir. 1996)

Mere fact that device or process utilizes known scientific principle does not alone make that device or process obvious
Mere possibility that ester or active methylene group-containing compounds disclosed in reference could be modified or replaced in manner that would lead to specific sulfoalkylated resin recited in claims does not render claimed process obvious, absent suggestion in prior art that such modification or replacement is desirable

In re Kemps, 40 USPQ2d 1309 (Fed. Cir. 1996)

Motivation in prior art to combine teachings of references sufficient, even if different motivation from applicant's

Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 37 USPQ2d 1626 (Fed. Cir. 1996)

Reason, suggestion, or motivation to combine may come from
References themselves
Knowledge of those skilled in the art that certain references or disclosures in references are known to be of special interest or importance in the particular field
Nature of the problem to be solved


Derman v. PC Guardian, 37 USPQ2d 1733 (Fed. Cir. 1995) (unpublished)

Preamble does not limit claim scope if simply states purpose or intended use
If preamble element referred to in claim body, then element provides necessary definition for structural limitation

Prosecution History Estoppel

Chalais v. Milton Bradley Co., 39 USPQ2d 1197 (S.D.N.Y. 1996)

Concession made during prosecution regarding scope of the claims

Colgate Palmolive Co. v. W.L. Gore & Associates, Inc., 39 USPQ2d 1174 (D.N.J. 1996)

Unambiguous abandonment of non-microcrystalline waxes because of belief that waxes would not bind to teflon floss

Ekchian v. Home Depot, Inc., 37 USPQ2d 1477 (E.D.Va. 1995)

Claims distinguished from prior art on grounds of nonconductivity of liquid

Spraytec, Inc. v. DJS&T, 38 USPQ2d 1566 (C.D.Cal. 1995)

Amendment from "a dispensing tube means" to "a plurality of dispensing tubes" surrenders coverage to devices with single dispensing tubes, whether or not required to secure claim allowance

Public Use/On Sale/Experimental Use

Baxter Int'l. v. Cobe Labs., Inc., 39 USPQ2d 1437 (Fed. Cir. 1996)

Public use by third party who had no relationship or connection with inventor, and who was under no obligation of confidentiality or control of inventor
Experimental use must be directed towards determination of whether invention would work for its intended purpose

Mahurkar v. Impra, Inc., 37 USPQ2d 1138 (Fed. Cir. 1995)

Special deal made to satisfy requirements of a licensing agreement and not a sale made on ordinary commercial terms was not "commercialization" that helped inventor determine value of claimed invention

Monon Corp. v. Stoughton Trailers, Inc., 38 USPQ2d 1503 (N.D.Ill. 1996)

Commercial exploitation from single sale made to solicit business for 300 more

Robotic Vision Systems, Inc. v. View Eng'g., Inc., 39 USPQ2d 1167 (C.D.Cal. 1996)

Sale for profit not saved by absence of undeveloped, but unclaimed software

Seal-Flex, Inc. v. Athletic Track and Court Construction, 40 USPQ2d 1450 (Fed. Cir. 1996)

Invention must be known to work for its intended purpose to be "complete" based on the reasonableness of the surrounding circumstances


Bausch & Lomb, Inc. v. Alcon Labs., Inc., 38 USPQ2d 1377 (W.D.N.Y. 1996)

Court determination of "not invalid" not binding on PTO in reexamination

In re Continental General Tire, Inc., 38 USPQ2d 1365 (Fed. Cir. 1996)

MPEP can not authorize Court-ordered reexamination request

Emerson Elec. Co. v. Davoil, Inc., 39 USPQ2d 1474 (Fed. Cir. 1996)

Documentary bases for reexamination request can not be Court-ordered
Reexamination at discretion of requester

Herman Miller, Inc. v. Teknion Furniture Systems, Inc., 39 USPQ2d 1211 (N.D.Ill. 1996)

Cancellation of patent claims without prejudice following start of reexamination not equivalent to legal admission of invalidity

In re Recreative Technologies Corp., 38 USPQ2d 1776 (Fed. Cir. 1996)

MPEP can not authorize examiner to reject original patent claims on reference asserted in original examination as sole ground of rejection in a reexamination, even if institution of reexamination otherwise proper

Thermalloy, Inc. v. Aavid Eng'g., Inc., 39 USPQ2d 1457 (D.N.H. 1996)

Claims impermissibly broadened during reexamination


Baker Hughes, Inc. v. Kirk, 38 USPQ2d 1885 (D.C.Cir. 1995)

Reissue must be filed with consent of all assignees

Section 102(d)

Bayer AG v. Barr Labs, Inc., 39 USPQ2d 1862 (S.D.N.Y. 1996)

Effective filing date of U.S. application under 35 U.S.C. ¶102(d) is actual date of U.S. filing; does not include benefit of 35 U.S.C. ¶119

Statutory Subject Matter

State Street Bank and Trust Co. v. Signature Financial Group, Inc., 38 USPQ2d 1530 (D.Mass. 1996)

Computerized accounting system for managing mutual fund investment structure that changes one set of numbers in claim, without more, essentially performs mathematical calculations on data gleaned from presolution activity and stores/displays results; thus, fails to recite any significant pre- or post-solution activity, measure physical objects/phenomena, or physically convert data into different form


In re Milligan, ____ USPQ2d ____ (Fed. Cir. 1996)

Lack of utility for symptoms and cause of arthritis

Written Description

In re Alton, 37 USPQ2d 1578 (Fed. Cir. 1996)

Examiner erred by dismissing declaration without adequate explanation of how declaration failed to overcome inadequate written description rejection


Herman v. William Brooks Shoe Co., 39 USPQ2d 1773 (S.D.N.Y. 1996)

Rule 131 affidavits to PTO with false statements "material" per se

In re Kemps, 40 USPQ2d 1313 (Fed. Cir. 1996)

Standard of review of PTO factual determinations in patent examination process is "clearly erroneous," not "arbitrary and capricious" under APA

Refac Int'l., Inc. v. Lotus Development Corp., 38 USPQ2d 1665 (Fed. Cir. 1996)

Affidavits to PTO from "disinterested parties" must include, under appropriate circumstances, such material information as affiants' prior knowledge of invention at issue

First presented at the Patent and Trademark Office Day-Annual Conference, Co-Sponsored by the U.S. Patent & Trademark Office and Intellectual Property Owners (IPO) December 16,1996.


[1].Oblon, Spivak, McClelland, Maier & Neustadt, P.C., Arlington, Virginia.