DEFINED GENUS REQUIRED BY THE RIVERA CASE*

Harold C. Wegner**

I. OVERVIEW 2

II. GENERIC DEFINITIONS IN THE SUMMARY OF THE INVENTION 3

A. Placement in the Summary of the Invention

B. Absence of a Generic Definition is Problematic

1. The Mentor Graphics Case

2. The Rivera Case

3. The Cisco Systems Case

III. TWIN FILINGS AS BASIS FOR A MODIFIED GENUS 13

IV. ILLUSION OF A ONE YEAR GRACE PERIOD 14

A. Filing within 18 Months from the Priority Date

B. 18 Month Filing also Contains the Original Generic Scope

C. Events not Saved by the One Year Grace Period

D. “State of the Art” is Determined without the Grace Period

E. “State of the Art” to Determine Obviousness

V. CONCLUSION 26

AUTHOR INFORMATION 27

______________________ *This paper is based in part on the author’s treatise, FIRST TO FILE PATENT

DRAFTING: A PRACTITIONER’S GUIDE (Thomson Reuters 2017), referred to

herein as the “Wegner Treatise.” Information is available from the publisher,

http://legalsolutions.thomsonreuters.com/law-products/Treatises/First-To-File-

Patent-Drafting-2017-ed/p/104366885

An electronic version of the treatise will be available shortly on Westlaw.

**

Author contact information is found at page 27.

Wegner, Defined Genus Required by the Rivera Case

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I. OVERVIEW

The Federal Circuit decision in Rivera v. Int’l Trade Comm’n, __ F.3d __,

2017 WL 2233501 (Fed. Cir. 2017)(Linn, J.), serves as an important reminder that

a generic definition for an invention should be spelled out, preferably set forth both

in “claim 1” and the Summary of the Invention. See § II, Generic Definitions in the

Summary of the Invention.

It is often difficult early in the evolution of a generic invention to know

precisely how broadly the invention should be defined, given the nascent level of

knowledge of the state of the art which will determine the scope to which the

applicant is entitled to have for “claim 1”. Given the pressures of first-to-file, an

early provisional application should be filed that contains one or more generic

definitions, the best guess that can be made given the incomplete knowledge of the

state of the art. The provisional application should then be followed as soon as

possible with a realistic definition of the scope for “claim 1” consistent with the

better knowledge of the state of the art. See § III, Twin Filings as Basis for a

Modified Genus.

There is an apparent one year grace period for filing a patent application

after the inventor’s disclosure of that invention. But, this is largely an illusion

and hence of no practical value. See § IV, Illusion of a One Year Grace Period.

Wegner, Defined Genus Required by the Rivera Case

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II. GENERIC DEFINITIONS IN THE SUMMARY OF THE INVENTION

A. Placement in the Summary of the Invention

It is very important to define a generic invention in the original application,

preferably in the Summary of the Invention that makes it clear that the applicant

has “possession” of the generic invention. The same generic recitation should

appear in at least one original claim. (To be sure, as a technical matter, an original

claim is also a part of the specification as filed.) If there is neither such a generic

disclosure in an original claim nor elsewhere in the original specification, the

applicant faces what may at best be a difficult situation or at worse a case where

the claims lack a “written description” under 35 USC § 112(a).

B. Absence of a Generic Definition is Problematic

1. The Mentor Graphics Case

In the context of a generic invention, the “written description” requirement

of 35 USC § 112(a) is explained by Circuit Judge Moore in Mentor Graphics

Corp. v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017)(Moore, J.). She notes

that if an invention is set forth in an original claim then such an original claim may

satisfy the “written description” requirement. This is in sharp contrast to the

situation in the Rivera v. Int’l Trade Comm’n, __ F.3d __, 2017 WL 2233501

(Fed. Cir. 2017)(Linn, J.), where there was no original disclosure of the generic

invention in the original claims or elsewhere in the specification.

Wegner, Defined Genus Required by the Rivera Case

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As explained by Circuit Judge Moore in Mentor Graphics:

“A patent satisfies the written description requirement when ‘the disclosure

of the application relied upon reasonably conveys to those skilled in the art that the

inventor had possession of the claimed subject matter as of the filing date.’ Ariad

Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). We review

a grant of summary judgment of no written description de novo. Crown Packaging

Tech. v. Ball Metal Beverage, 635 F.3d 1373, 1380 (Fed. Cir. 2011). * * *

“* * * The very language of claim 1 which the [trial] court held was not supported

by the specification was present in the originally-filed claims. Original claims

are part of the original specification and in many cases will satisfy the written

description requirement. Ariad, 598 F.3d at 1349; see ScriptPro LLC v. Innovation

Assocs., Inc., 833 F.3d 1336, 1341 (Fed. Cir. 2016); Crown Packaging, 635 F.3d at

1381. These claims raise none of the genus/species concerns that have caused us to

question whether originally filed claims satisfy written description. See, e.g.,

Ariad, 598 F.3d at 1349–51. The claims at issue in this case are indistinguishable

from other cases relying on originally-filed claims to satisfy the written description

requirement. Like Crown Packaging, the ‘original claims clearly show that the

applicants recognized and were claiming [the disputed limitation].... These claims

show, as Ariad recognized many original claims do, that the applicants had in mind

the invention as claimed’ and described it. 635 F.3d at 1381. Original claim 1

recites ‘one or more signal routing clock signals which are independent of the first

and second clock signals.’ This is the precise language the district court found

missing from the '882 specification. (‘[T]he specification does not demonstrate

possession of the unqualifiedly independent clocking that the asserted claims

require....’) (JMOL order); compare ScriptPro, 833 F.3d at 1341 (finding written

description support when the original claims and the challenged claims recited the

same limitation). We conclude that this original claim language clearly

demonstrates that the inventor possessed an invention including ‘one or more

signal routing clock signals which are independent of the first and second clock

signals’ and described it.”1

1 Mentor Graphics, 851 F.3d at 1296-97 (internal record citations omitted).

Wegner, Defined Genus Required by the Rivera Case

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B. The Rivera Case

In contrast, the more recent Rivera case illustrates the challenge the initial

patent draftsman faces where he is presented with a mechanical invention

involving alternate embodiments and there is no generic recitation of the invention

in the original application, either in the original claims or the remainder of the

disclosure.

The Rivera patent claims a coffee maker that has “a container, disposed

within the brewing chamber and adapted to hold brewing material while brewed by

a beverage brewer[.]” But, the original application discloses only a container that

accepts one species, the disclosed “cup-shaped beverage filter cartridges” (e.g.,

Keurig “K-Cups”). The original application failed to disclose embodiments with

“pods”, described as “typically somewhat flattened disc shaped filter paper packets

containing coffee.” Thus, the claims as granted are generic to use of the disclosed

K-Cups as well as “pods”.

As explained by Circuit Judge Linn (with internal record citations deleted;

bold italics added by this writer):

“Because substantial evidence supports the Commission's holding that all asserted

claims are invalid for lack of written description [under 35 USC § 112(a)], we

affirm. ***

“The '320 patent describes single-brew coffee machines falling into two general

categories. ‘Some machines have brewing chambers configured to receive pods

which are small, flattened disk-shaped filter packages of beverage extract, while

other machines are configured to accommodate larger, cup-shaped beverage filter

cartridges.’ The Keurig® system, which uses ‘K-Cups,’ is an example of the latter

system.

Wegner, Defined Genus Required by the Rivera Case

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“The patent describes the Keurig® brewer in some detail, and notes that it

‘inherently limits the use of the machine to cup-shaped cartridges,’ so that ‘users of

the Keurig machine ... would have to purchase a different machine to brew

beverage from pods, which are typically somewhat flattened disc shaped filter

paper packets containing coffee[.]’ Because multiple machines are inconvenient

and expensive, the '320 patent identifies ‘a need for brewers configured for cup-

shaped cartridges [to] also be used to brew beverages from pods.’

“The '320 [patent] explicitly defines a ‘pod’ as follows: ‘As used herein, the term

‘pod’ is a broad term and shall have its ordinary meaning and shall include, but not

be limited to, a package formed of a water permeable material and containing an

amount of ground coffee or other beverage therein.’ * * *

“The '320 patent includes several embodiments to effectuate its purposes. Every

embodiment in the '320 patent shows a cup-shaped ‘receptacle,’ adapted in various

ways to receive a discrete water permeable, coffee-containing ‘pod.’ * * *

“The remaining embodiments either show only a ‘receptacle’ without a filter ***

or show a discrete ‘pod’ with filter sitting inside the receptacle[.]

“The patent was filed on July 13, 2007, claiming a ‘pod adaptor assembly’ with a

‘receptacle ... adapted to provide a support surface for a pod,’ or a ‘pod adaptor

assembly’ with a ‘housing having an interior region adapted to receive a beverage

pod,’ or a ‘brewing chamber for a beverage pod’ with ‘a housing adapted to

receive the beverage pod.’ After almost seven years of prosecution and multiple

amendments, the '320 patent issued. None of the claims as issued included any

reference to a ‘pod,’ ‘pod adaptor assembly,’ or ‘brewing chamber for a beverage

pod.’ Instead, the relevant claims call for ‘a container ... adapted to hold brewing

material.’ Representative claim 5 reads as follows:

“5. A beverage brewer, comprising:

a brewing chamber;

a container, disposed within the brewing chamber and adapted to hold brewing

material while brewed by a beverage brewer, the container comprising:

a receptacle configured to receive the brewing material; and

a cover;

wherein the receptacle includes

Wegner, Defined Genus Required by the Rivera Case

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a base, having an interior surface and an exterior surface, wherein at least a portion

of the base is disposed a predetermined distance above a bottom surface of the

brewing chamber, and

at least one sidewall extending upwardly from the interior surface of the base,

wherein the receptacle has at least one passageway that provides fluid flow from an

interior of the receptacle to an exterior of the receptacle;

wherein the cover is adapted to sealingly engage with a top edge of the at least one

sidewall, the cover including an opening, and

wherein the container is adapted to accept input fluid through the opening and to

provide a corresponding outflow of fluid through the passageway;

an inlet port, adapted to provide the input fluid to the container; and

a needle-like structure, disposed below the base;

wherein the predetermined distance is selected such that a tip of the needle-like

structure does not penetrate the exterior surface of the base.

[original emphasis]

“*** The Commission [in the proceedings below] held that, inter alia, asserted

claims 5–7, 18, and 20, were invalid for lack of written description ***.

* * *

“II. DISCUSSION

* * *

“B. Written Description

“The specification of a patent as filed must ‘contain a written description of the

invention.’ 35 U.S.C. § 112. A specification has an adequate written description

when it ‘reasonably conveys to those skilled in the art that the inventor had

possession of the claimed subject matter as of the filing date’ of the patent. Ariad

Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

‘[T]he test requires an objective inquiry into the four corners of the specification

from the perspective of a person of ordinary skill in the art .... [to] show that the

inventor actually invented the invention claimed.’ Id.

“The basic issue in this case is whether the ‘pod adaptor assembly,’ ‘pod,’ and

‘receptacle’ disclosures in the patent as filed, support Rivera's ‘container ... adapted

to hold brewing material,’ as recited in independent claim 5. ***

* * *

Wegner, Defined Genus Required by the Rivera Case

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“Rivera's primary argument is that the Commission failed to apply the broad

definition of a ‘pod’ contained in the specification, and that correctly applying that

definition would have provided written description support for the claimed

integrated filter cartridge. Rivera reasons that the integrated filter cartridge is

simply a configuration of the generic disclosure of a ‘pod.’ The specification

explicitly defines a ‘pod’: ‘[A]s used herein, the term ‘pod’ is a broad term and

shall have its ordinary meaning and shall include, but not be limited to, a package

formed of a water permeable material and containing an amount of ground coffee

or other beverage therein.’ According to Rivera, this definition teaches a broad

genus, which provides written description support for the species shown in the

specification's embodiments (with a ‘pod’ including a filter distinct from the

cartridge), and the species represented by the accused products (with a filter

integral to the cartridge).

“The Commission and [the accused infringer] respond that the broader definition

of a ‘pod’ does not provide written description support for the claimed ‘container

... adapted to hold brewing material’ (i.e., a container with an integral filter)

because: (1) every embodiment and teaching in the specification shows the ‘pod’

and the cartridge or container as distinct elements; (2) the distinction of the ‘pod’

from the cartridge or container is fundamental to the problem and solution taught

in the specification; and (3) the embodiments shown in the specification would not

work without a separate filter.

“We agree with the Commission and [accused infringer] Solofill. The underlying

concern addressed by the '320 patent is enabling compatibility between pods used

in pod-type beverage brewers and cartridges used in cartridge-type beverage

brewers. See '320 patent, Abstract (‘The assembly is especially designed for

brewing pods in brewers configured for cup-shaped beverage extract cartridges.’);

id. (‘This invention ... more particularly, relates to an adaptor assembly configured

to effect operative compatibility between a single serve beverage brewer and

beverage pods.’); id. (distinguishing machines ‘configured to receive pods’ and

machines ‘configured to accommodate larger, cup-shaped beverage filter

cartridges’); id.(explaining that Keurig machines are ‘inherently limit[ed]’ to using

cup-shaped cartridges, and users ‘would have to purchase a different machine to

brew beverage from pods’); id. (‘[T]here is a need for an apparatus and method for

modifying single serve beverage brewers configured for cup-shaped cartridges so

that they can also be used to brew beverages from pods.’).

Wegner, Defined Genus Required by the Rivera Case

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“The distinction between ‘pods’ and cartridges permeates the entire patent. There

is no hint or discussion of a cartridge or pod adaptor assembly or receptacle that

also serves as the ‘pod.’ Instead, the specification explains how the cartridge may

be adapted to accept a separate ‘pod’ to be used inside the cartridge. For example,

the embodiment in Figure 1A calls for a ‘cup-shaped receptacle’ with ‘protrusions

122 [to] collectively provide a plurality of spaced apart raised surfaces for the pod

to rest against.’ * * *

* * *

“Rivera's argument essentially requires that an ordinary artisan would read the

broad definition of ‘pod’ as encompassing anything containing a water permeable

material that contains brewing material, in whatever form. For this, Rivera relies

on Honeywell Int'l Inc. v. United States, 609 F.3d 1292, 1301 (Fed. Cir. 2010), in

which we held that the teaching of a CRT-type monitor provided written

description support for other types of monitors. Rivera argues that he was ‘not

required to recite in the '320 patent the multitude of well-known water permeable

materials.’ This argument is inapposite. The question is not whether the disclosure

of one water permeable material (equivalent to the disclosure of a CRT monitor in

Honeywell) supports the use of other water permeable materials. Rather, the

question is whether a pod adaptor assembly intended to allow compatibility

between distinct brewing systems, also supports an undisclosed configuration that

eliminates a fundamental component of one of those systems (i.e., the ‘pod’)

through integration. It does not.

* * *

“Finally, Rivera argues that the background knowledge of those skilled in the art

can supplement the teaching in the specification to provide written description

support. For this proposition, Rivera relies on Boston Scientific Corp. v. Johnson &

Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) and Falkner v. Inglis, 448 F.3d

1357, 1367–68 (Fed. Cir. 2006). Rivera argues as follows: (1) ordinary artisans

recognized the need for some type of filter in the cartridge; (2) ordinary artisans

were aware of the availability of an integrated filter; (3) nothing in the patent limits

the use of a filter to an enclosed package to put into a separate cartridge; and

therefore (4) the '320 patent provides written description support for an integrated

filter.

“We reject Rivera's argument. As we explained in Ariad, the written description

inquiry looks to ‘the four corners of the specification’ to discern the extent to

Wegner, Defined Genus Required by the Rivera Case

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which the inventor(s) had possession of the invention as broadly claimed. Ariad,

598 F.3d at 1351; see also Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571

(Fed. Cir. 1997) (‘It is the disclosures of the applications that count.’). The

knowledge of ordinary artisans may be used to inform what is actually in the

specification, see Lockwood, 107 F.3d at 1571, but not to teach limitations that are

not in the specification, even if those limitations would be rendered obvious by the

disclosure in the specification. Id. at 1571–72. The specification here does not

teach a container with an integrated filter, and so, does not provide written

description support for such a container, even if that type of container might be

rendered obvious by the specification.

* * *

“As the Commission correctly explained, this case is substantially similar to

several of our cases holding claims unsupported by the written description, in

which the specification fails to teach a potential configuration of elements. For

example, in ICU Medical, the specification (and the initially filed claims) included

a medical device valve for the transmission of fluids requiring a spike to pierce a

seal in an intravenous medicine delivery setup. ICU Medical, Inc. v. Alaris

Medical Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009). A group of later filed

claims eliminated the spike limitation. We held that the specification only

described medical valves with spikes, and that the specification could not support

claims for spikeless valves, even though ordinary artisans would have understood

that the slits originally made by the spikes could also have been made by

compression of a (disclosed) preslit seal. Id. at 1378–79 (‘The fact that

compression of a preslit seal would allow an opening for fluid transmission [(and

thus accomplish what the spike accomplished)] does not answer the question of

whether the claimed invention nevertheless requires a spike capable of piercing the

seal in preslit embodiments.’). The '320 patent similarly discloses only a pod

adapter assembly with a separate ‘pod.’ That ordinary artisans may have

understood that the filter could be incorporated into the cartridge does not save the

claims—ordinary artisans would not have understood that Rivera had possession of

an integrated filter system. The ‘broad’ definition of a pod does not change that—

however broad ‘pod’ is, it must still be distinct from pod adapter assembly.

“Rivera attempts to distinguish ICU Medical, arguing that the broad definition of

‘pod’ here also includes integral filter cartridges. As explained above, even the

Wegner, Defined Genus Required by the Rivera Case

11

broad definition of ‘pod’ does not provide such a teaching. We thus reject Rivera's

argument. 2

To be sure, in the Rivera case there were additional weaknesses in the

disclosure.3

C. The Cisco Systems Case

Rivera does not set a new precedent, but is in a line of cases denying

“written description” basis for features not in the originally claimed or disclosed

invention. Another example denying “written description” support is the Cisco

Systems case that traces denial of “written description” support to earlier cases4 as

explained by Circuit Judge Chen:

2 Rivera v. Int’l Trade Comm’n, __ F.3d __, 2017 WL 2233501 (Fed. Cir.

2017)(Linn, J.).

3 The specification had several other weaknesses include the fact that the

only exemplification of the invention was of the overall combination with the K-

Cups. (This could have been mitigated if the application in the Summary of the

Invention had explained alternate embodiments of the invention involving

subcombinations of elements.)

Additionally, the application explained the limitation of the invention to a K-

Cup configuration. In reaching a conclusion that the specification did not provide

support for the claims, the Court relied upon and quoted from the Abstract.

In addition, the Abstract of the Disclosure contained arguments of

patentability supporting the limitation of the invention to the K-Cup configuration.

4 Cisco Systems, Inc. v. Cirrex Systems, LLC, __ F.3d __, __, 2017 WL 1901653,

slip op. at 7 (Fed. Cir. 2017)(Chen, J.).

Wegner, Defined Genus Required by the Rivera Case

12

“ [As] to the Board's finding of patentability of the equalization and discrete

attenuation claims over Cisco's objection for lack of written description support,

we note first that the ′082 patent issued with original claims 1–34, and Cirrex later

added claims 35–124 during reexamination, of which claims 56, 57, 76, 102, and

103 were found patentable. Because none of the added claims were part of the ′082

patent's original disclosure, Cirrex cannot rely on them for written description

support. See Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir.

1998) (The patentee's ‘original disclosure serves to limit the permissible breadth of

his later-drafted claims.’).

“The written description requirement provides that a patentee must ‘clearly allow

persons of ordinary skill in the art to recognize that [he] invented what is claimed.’

Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en

banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).

‘[T]he test for sufficiency is whether the disclosure of the application relied upon

reasonably conveys to those skilled in the art that the inventor had possession of

the claimed subject matter as of the filing date.’ Id. ‘[T]he level of detail required

to satisfy the written description requirement varies depending on the nature and

scope of the claims and on the complexity and predictability of the relevant

technology.’ Id.

“In Gentry Gallery, Inc. v. Berkline Corp., a patentee amended his claims to

remove a limitation reciting the placement of controls for a set of two parallel

recliners on a console between the two recliners. 134 F.3d 1473, 1479 (Fed. Cir.

1998). We reversed the district court's conclusion upholding the claims' validity

because the specification specifically contemplated the central console as the only

location for the controls. Id. Although Gentry Gallery ‘did not announce a new

‘essential element’ test mandating an inquiry into what an inventor considers to be

essential to his invention and requiring that the claims incorporate those elements,’

it ‘applied and merely expounded upon the unremarkable proposition that a broad

claim is invalid when the entirety of the specification clearly indicates that the

invention is of a much narrower scope.’ Carnegie Mellon Univ. v. Hoffmann–La

Roche Inc., 541 F.3d 1115, 1127 (Fed. Cir. 2008) (quoting Cooper Cameron Corp.

v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002))..

“Similarly, in PIN/NIP, Inc. v. Platte Chemical Co., we explained that ‘[w]hile it is

legitimate to amend claims or add claims to a patent application purposefully to

encompass devices or processes of others, there must be support for such

amendments or additions in the originally filed application.’ 304 F.3d 1235, 1247

Wegner, Defined Genus Required by the Rivera Case

13

(Fed. Cir. 2002). On appeal, we reversed the district court's validity finding. We

held that the challenged claim reciting ‘the spaced, sequential application of the

two separate chemicals’ to certain tubers was invalid for lack of written description

support because the ‘originally filed application, which is devoid of any mention or

even implication that the two chemicals can be applied in a spaced, sequential

manner, does not support the later-added claim.’ Id. at 1247–48.”

III. TWIN FILINGS AS BASIS FOR A MODIFIED GENUS

With it no longer possible under the Leahy Smith America Invents Act of

2011 to establish a date of invention through a pre-filing reduction to practice,

consideration should be given to a provisional application as the first application

where a broad generic definition of the invention is made and complemented by

one or two sub generic definitions of the invention to provide basis to avoid the

pitfall of the Rivera case.

For the overseas applicant from Asia or Europe, the first filing will, of

course, usually be a national “home country” application, instead of the provisional

application filed by a domestic applicant as the first filing.

Then, as soon as the state of the art is fully understood, at that time a

continuation of the provisional should be made that focuses upon one of the

original definitions in the provisional application, and also adds yet another

generic definition that is based upon the more advanced knowledge of the state of

the art.

Wegner, Defined Genus Required by the Rivera Case

14

It is important that the continuation application is filed prior to the

18 month publication which may create prior art to deny any claim with a new

definition of the invention. In fact, filing the continuation should not be delayed

until just before the 18 month publication, but should be filed as soon as possible

to mitigate the chance of a competitor’s prior art publication in the interval before

filing.

In addition to any new definition of the scope of the invention, at least one

of the original definitions from the original application should be maintained as a

safeguard, a backup generic scope in the event it is discovered that there is prior art

to defeat the generic definition first added in the continuation.

IV. ILLUSION OF A ONE YEAR GRACE PERIOD

A. Filing within 18 Months from the Priority Date

It is important to recognize that any continuation application with a new

definition of the generic subject matter should be filed within the period prior to

the 18 month automatic publication of the application (dated from the priority

date). Under the old law the deadline was effectively 24 months from the

effective filing date, given the one year grace period under the former law under

35 USC § 102(b).

Under the new law of the Leahy Smith America Invents Act of 2011, the

practical deadline for a continuation with a new generic definition expires at the

time of the automatic publication of the original application 18 months from the

priority date.

Wegner, Defined Genus Required by the Rivera Case

15

B. 18 Month Filing also Contains the Original Generic Scope

To minimize the consequences of the possibility that an intervening prior

art publication will be found, all supporting disclosure from the original filing

should be carried forward verbatim into the continuing application – together

with any added material. Thus, while new material may be added, nothing from

the original specification should be deleted.5

Although there is a one year grace period for filing after the applicant’s own

disclosure, this is not a reliable grace period because a third party publication of a

different but obvious embodiment in that grace period is not saved by the grace

period.6

5 Wegner treatise, § 4:6, Identical Supporting Disclosure should be Maintained; § 11:27,

Narrowed Range Barred by Intervening Disclosure (discussing In re Ruscetta, 255 F.2d 687

(CCPA 1958)(broadened definition barred); In re Lukach, 442 F.2d 967, 968-70 (CCPA

1971)(Lane, J.)(narrowed definition barred))..

6 To be on the safe side, an application containing a disclosure not supported in the parent

application should be filed within 18 months of the priority date, i.e., before the automatic

publication of the application. Although that publication is not itself a statutory bar because of

35 USC § 102(b)(1)(A)(“A disclosure made 1 year or less before the effective filing date of a

claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if ... the

disclosure was made by the inventor…”), if a third party then makes an obvious variation of the

disclosed subject matter, that obvious variation is outside the grace period.

Wegner, Defined Genus Required by the Rivera Case

16

C. Events not Saved by the One Year Grace Period

The new grace period does remove certain acts within the year prior to filing

as “prior art” under 35 USC § 102(b). But, the new grace period does not remove

such acts from establishing the state of the art for obviousness under 35 USC

§ 103.

One should never prospectively rely upon the grace period because various

events prior to the filing date (or priority date) are not saved by the grace period:

The new “grace period” is imperfect as it does not provide a blanket

disqualification of certain “prior art” acts of the inventor under 35 USC

§ 102(a): It only removes such actions as “prior art” under 35 USC § 102(b).

Such disclosures are independently integers used to determine the “state

of the art” which is outcome-determinative in consideration of obviousness

under 35 USC § 103. Such pre-filing disclosures are clearly within the ambit

of the state of the art which is measured as of the filing date and not the

invention date. As explained by Dean Holbrook, “patent applicants [in the

United States] must show that they are the first to possess the invention not

only by being the first to invent (under the 1952 Act) or the first to file (under

the AIA), but also by being first relative to general knowledge, i.e. the state of

the art.” Timothy R. Holbrook, Patent Anticipation and Obviousness as

Possession, 65 Emory L.J. 987, 994 (2016)(footnote deleted).

Wegner, Defined Genus Required by the Rivera Case

17

In addition, the claimed invention is barred (unpatentable) if a third party

learns of the invention during the grace period and then makes a prior art

disclosure of an obvious variation during the grace period before the applicant files

his patent application.

Under the Leahy Smith America Invents Act of 2011, the new definition of

prior art found in 35 U.S.C.A. §102(a)(1) defines events prior to the inventor’s

filing date:

“A person shall be entitled to a patent unless—the claimed invention was

patented, described in a printed publication, or in public use, on sale, or

otherwise available to the public before the effective filing date of the claimed

invention[.]”

There is no grace period comparable to the prior Section 102(b) with its

blanket exclusion of a prior art effect for one year from the prior art event of

Section 102(b). Instead, the new grace period disqualifies certain prior art:

Without a grace period disqualifier under 35 U.S.C.A. § 102(b)(1)(A), certain acts

at any time prior to the filing date create a bar without the saving provision of a

grace period.

(To be sure, this analysis is focused on the literal wording of the statute;

arguments can and will be made against this interpretation, yet, unless and until the

judicial system adopts such arguments, it is prospectively dangerous to consider

the prior art disqualifiers of Section 102(b)(1)(A) the equivalent of a full grace

period.)

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18

The wording of the prior art disqualifiers is not coextensive with the prior art

definition of the new Section 102(a)(1); hence, certain acts within Section 102(a)

are prior art without a grace period to save the applicant. The saving provision if

found in 35 U.S.C.A. § 102(b)(1)(A) insofar as it relates to the inventor’s prior

disclosures states:

“A disclosure made 1 year or less before the effective filing date of a claimed

invention shall not be prior art to the claimed invention under [35 U.S.C.A.

§ 102](a)(1)(A) if — the disclosure was made by the inventor or joint

inventor or by another who obtained the subject matter disclosed directly or

indirectly from the inventor or a joint inventor[.]”

(A parallel disqualifier under Section 102(b)(1)(B) disqualifies as prior

art a third party’s action prior to the filing date where “the subject matter

disclosed had, before such disclosure, been publicly disclosed by the inventor

or a joint inventor ***.” Additional disqualifiers are present for other

situations not relevant to this discussion.)

So, where does the literal wording of the prior art disqualifiers fail to

save the inventor who files his patent application after his first divulgation of

the invention under Section 102(a)(1)?

There are three such areas where, indeed, the wording comes up short in

that the prior art disqualifier is not coextensive with the wording of the statute.

Whether a test case will resolve the limits of any or all of these prior art

disqualifiers is not for this writer to say, but, rather each point will need to be

resolved, if not by the Supreme Court, at least by the Federal Circuit.

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19

First, if there is, say, a one year interval between the date of invention and

the filing date, if the state of the art just before the filing date has risen to the point

that the invention is now, for the first time, obvious over this late state of the art,

the invention is unpatentable. Thus, under the literal wording of 35 USC § 103 an

invention is now obvious (and hence unpatentable) “if the differences between the

claimed invention and the prior art are such that the claimed invention as a whole

would have been obvious before the effective filing date of the claimed invention

to a person having ordinary skill in the art to which the claimed invention

pertains.”

So, if the inventor (or anyone else) before the filing date provides motivation

to make the invention or the state of the art is otherwise such that there motivation

shown after the invention is made but before the filing date, is the invention

obvious and hence unpatentable under the new wording of Section 103?

In other words, if the state of the art has advanced in the period between the

date of invention when the invention was unobvious, the higher state of the art at

the filing date a year or so later may mean that the invention is now obvious. This

is a major change in the law mandated by a simple changing of a phrase in Section

103 that had determined nonobviousness as of the state of the art at the date of the

invention now, under the Leahy Smith America Invents Act of 2011 is determined

as of the “effective filing date.” See § 3:3, Obviousness as of the Filing Date (not

Invention Date). Even if the patentee’s late filing of the invention does not result

in the invalidity of his claims, the heightened state of the prior art could lead to a

narrower scope of protection from the standpoint of enforcement. See § 3:5, State

of the Art to Determine Scope of Protection.

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20

Second, the literal wording of the statute (and the way the statute is

interpreted by the Patent Office) leads to the conclusion that if the inventor

publishes “today” on his new Alpha invention, a third party publishes on a

different but obvious variation “tomorrow” – the Beta embodiment –and then the

inventor files a patent application “the day after tomorrow” on his Alpha invention,

the third party publication of the Beta embodiment creates a statutory bar to deny a

valid patent to the Alpha invention.

The reason that the Best embodiment is outside the grace period – at least as

to its literal wording – is because it is not the “claimed invention” within the

meaning of the statute: Under 35 USC § 102(b)(1)(A), “[a] disclosure made 1 year

or less before the effective filing date of a claimed invention shall not be prior art

to the claimed invention under [35 USC §] (a)(1) if … [under 35 USC

§ 102(b)(1)(B)] the disclosure was made by the inventor or joint inventor or by

another who obtained the subject matter disclosed directly or indirectly from the

inventor or a joint inventor[.]”

The grace period thus only applies to pre-filing activities with “the claimed

invention” and not, under the literal wording, to different subject matter. If the

literal wording is followed, this means that a third party publication of an obvious

variant in the interval between disclosure and filing is outside the grace period, and

hence a bar to the claimed invention.

It will take a test case at the Federal Circuit to sort out whether the scope of

the grace period, limited to “disclosures” of the invention under the literal wording,

carries over to the full scope of patent-defeating subject matter under Section 102

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21

which is not comprised of “disclosures”, such as the “on sale” bar. Wegner

treastise, § 3:7, Art that does not “Disclose” the Invention.

Third, is a secret “on sale” event (or other non-disclosure event) a

“disclosure” of the invention under 35 USC § 103(a)(1)? The history of the grace

period may be traced to a non-disclosure event, “on sale” activity in Pennock v.

Dialogue, 27 U.S. (2 Pet.) 1, 24 (1829) (Story, J.), which led to the statutor

enactment of a grace period in 1839. It is difficult to predict the outcome of a test

case on this issue.

The classic “grace period” dating back to the nineteenth century has ended

with the Leahy Smith America Invents Act of 2011. A “grace period” in patent law

has been generally understood to permit an applicant to file a patent application

without penalty: Filing simply must take place within the “grace period” following

his public divulgation of his invention. The usage is consistent with the general

concept of a grace period outside patent law.

Dating back to its nineteenth century statutory origins, the American patent

“grace period” has always meant that an inventor could file within that a stated

period following divulgation of his invention without penalty.

At first blush, it appears that there is legislative history to support a broad

interpretation of the grace period. In fact, defects in the statutory wording went

uncovered for most of the many years of gestation of the patent reform legislation..

To be sure, the defects or apparent defects have yet to be litigated; there is

thus nothing definitive stated about the situation by the Federal Circuit.

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D. “State of the Art” is Determined without the Grace Period

At the outset, it should be noted that “state of the art” and “level of skill in

the art” are sometimes used as separate inquiries,7 but in fact a determination of the

“state of the art” is often the most important of several factors to determine the

“level of ordinary skill in the art”.

With the notable exception of Dean Holbrook, Timothy R. Holbrook, Patent

Anticipation and Obviousness as Possession, 65 Emory L.J. 987. 994 (2016), most attention

has been focused on provisions other than the issue of nonobviousness based on

the state of the art as of the filing date. But, the date to determine the state of the

art under 35 U.S.C.A. § 103 for determining obviousness is now the filing date of

the application: An invention is obvious (and hence unpatentable) “if the

differences between the claimed invention and the prior art are such that the

claimed invention as a whole would have been obvious before the effective filing

date of the claimed invention to a person having ordinary skill in the art[.]”

This is in marked contrast to prior Section 103(a) where determined

nonobviousness was measured “at the time the invention was made.”

So, in the case, for example, of an invention that is clearly nonobvious

(and hence patentable) at the time the invention was made, if the publication of

7 Randall Mfg. v. Rea, 733 F.3d 1355, 1360 (Fed. Cir. 2013)(“Randall argued that the state of the

art and the level of skill at the time of FG's application included well- known

options[.]”)(emphasis added); U.S. Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1252

(Fed. Cir. 1989)(Markey, C.J.)(citing In re Hogan, 559 F.2d 595, 607 (CCPA 1977))(“[I]n

determining sufficiency of support it is the state of the art [at the filing date] and level of skill in

the art at that time that is critical.”)(emphasis added).

Wegner, Defined Genus Required by the Rivera Case

23

the invention occurs before the filing date, is that once-nonobvious invention

now obvious as to the state of the art that includes that invention?

Under the law prior to the Leahy Smith America Invents Act one considered

the state of the art and the level of ordinary skill in the art to be as of the date of

invention so that the prior art that could be considered as part of the level of

ordinary skill in the art was congruent with the state of the prior art as of the date

of the invention. Now, however, the state of the art to determine the level of

ordinary skill in the art is measured as of the filing date so that the inventor’s

publication of the invention in the one year grace period prior to the filing date is

not “prior art” but may be considered as part of the knowledge of a person of

ordinary skill in the art as of the filing date, a point yet to be decided in any test

case at the Federal Circuit.

The argument that there is a difference between the “prior art” and the “level

of ordinary skill in the art” or the “state of the art” can be based upon the case law

where “prior art” and “level of ordinary skill” are each a separate Graham factor:

“Obviousness is a question of law based on underlying facts, as set forth in

Graham v. John Deere Co., 383 U.S. 1 (1966). The Graham factors are (1) the

scope and content of the prior art, (2) the difference between the prior art and the

claimed invention, (3) the level of ordinary skill in the field of the invention, and

(4) any relevant objective considerations.” Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1336 (Fed. Cir. 2013).

When the level of skill in the art is measured as of the filing date then the

argument can be made that the knowledge of a worker of ordinary skill in the art

certainly includes the grace period pre-filing publication by the inventor. “When

there is a design need or market pressure to solve a problem and there are a finite

number of identified, predictable solutions, a person of ordinary skill in the art has

Wegner, Defined Genus Required by the Rivera Case

24

good reason to pursue the known options within his or her technical grasp. If this

leads to the anticipated success, it is likely the product not of innovation but of

ordinary skill and common sense.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,

402-03 (2007).

What happens if the state of the art becomes more highly advanced in the

interval between the date the invention was made and the filing date? The answer

is simple: What is obvious at the date the application was filed may have made the

invention obvious, whereas the invention may not have been obvious at the time of

the invention.

To put the change in the law in context of Section 103, a good case study is

Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir. 2016)(Chen, J.), where the time

frame used was of the old law. Thus, under the old law:

“Section 103 forbids issuance of a claim when ‘the differences between the subject

matter sought to be patented and the prior art are such that the subject matter as a

whole would have been obvious at the time the invention was made to a person

having ordinary skill in the art.’ 35 U.S.C. § 103. The ultimate determination of

obviousness under § 103 is a question of law based on underlying factual findings.

In re Baxter Int'l, Inc., 678 F.3d 1357, 1361 (Fed.Cir.2012) (citing Graham v. John

Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations

consist of: (1) the ‘level of ordinary skill in the pertinent art,’ (2) the ‘scope and

content of the prior art,’ (3) the ‘differences between the prior art and the claims at

issue,’ and (4) ‘secondary considerations’ of non-obviousness such as ‘commercial

success, long-felt but unsolved needs, failure of others, etc.’ KSR Int'l Co. v.

Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham, 383 U.S. at 17–18).

“A claimed invention may be obvious even when the prior art does not teach each

claim limitation, so long as the record contains some reason why one of skill in the

art would modify the prior art to obtain the claimed invention. See Ormco Corp. v.

Align Tech., Inc., 463 F.3d 1299, 1307 (Fed.Cir.2006). *** Although an analysis of

the teaching, suggestion, or motivation to combine elements from different prior

Wegner, Defined Genus Required by the Rivera Case

25

art references is helpful, we must always be mindful that an obviousness inquiry

requires an ‘expansive and flexible approach.’ Kinetic Concepts, Inc. v. Smith &

Nephew, Inc., 688 F.3d 1342, 1360 (Fed.Cir.2012) (citing KSR, 550 U.S. at 415,

419). Importantly, we have repeatedly emphasized that an obviousness inquiry

requires examination of all four Graham factors and that an obviousness

determination can be made only after consideration of each factor. Id.”8

E. “State of the Art” to Determine Obviousness

The literal wording of 35 USC § 102(b) excludes certain acts as “prior art”

from the scope of 35 USC § 102(a), but these same acts are not excluded as

contributing to the state of the art under 35 USC § 103. Under Section 103

nonobviousness is defined in terms of the state of the art before the effective filing

date of the claimed invention. That there is a difference between the “prior art”

and the “level of ordinary skill in the art” is first of all seen from the separate

Graham v. John Deere Co., 383 U.S. 1 (1966), factors.9

8 Nike, Inc. v. Adidas AG, 812 F.3d at 1334-35 (emphasis added).

9 “Obviousness is a question of law based on underlying facts, as set forth in Graham v. John

Deere Co., 383 U.S. 1 (1966). The Graham factors are (1) the scope and content of the prior art,

(2) the difference between the prior art and the claimed invention, (3) the level of ordinary skill

in the field of the invention, and (4) any relevant objective considerations.” Soverain Software

LLC v. Newegg Inc., 705 F.3d 1333, 1336 (Fed. Cir. 2013)(emphasis added). See also Daiichi

Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir., 2007)(Archer, J.)(quoting In re

Dembiczak, 175 F.3d 994, 998 (Fed.Cir.1999)) (“ The underlying factual inquiries in an

obviousness analysis include: ‘(1) the scope and content of the prior art; (2) the level of ordinary

skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4)

objective evidence of nonobviousness.’ * * *”); see also Envtl. Designs, Ltd. v. Union Oil Co.,

713 F.2d 693, 696 (Fed.Cir.1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances,

Inc., 707 F.2d 1376, 1381-82 (Fed.Cir. 1983))( "Factors that may be considered in determining

level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of

problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which

Wegner, Defined Genus Required by the Rivera Case

26

A reference may be excluded as “prior art” but that same reference is also

one of the many determinants of the “state of the art”.10

V. CONCLUSION

Particularly with the advent of a true first-to-file system, priority of

invention can no longer be established by a pre-filing date of invention. Great care

must be exercised to craft a reasonable definition – or set of reasonable definitions

– so that the priority application will support a genus that is broad enough yet still

avoids reading on subject matter obvious in view of the prior art. An applicant

should get in the habit of providing the precise generic definition in the Summary

of the Invention to deny any basis for refusing priority for the generic definition.

innovations are made; (5) sophistication of the technology; and (6) educational level of active

workers in the field.").

10 In other words, “prior art” is one (and often the most important) factor in the

determination of “state of the art”. In re Ryan, 480 F.2d 1388, 1389 (CCPA 1973)(Lane,

J.)(“[T]he subject matter would have been obvious to one of ordinary skill in the art in light of

the state of the art[.]”)(emphasis added); In re Zenith, 333 F.2d 924, 926 (CCPA 1964)( Worley,

C.J.)(“[T]he question [is] whether the differences between [the claimed] invention and the state

of the art at the time the invention was made *** are such that the subject matter as a whole

would have been obvious to a person having ordinary skill in the art to which said subject matter

pertains.”) (emphasis added); In re Thompson, 438 F.2d 613, 616 (CCPA 1971)( Almond, J.)

(citing In re McKenna, 203 F.2d 717 (CCPA 1953)(“[T]he state of the art should be considered

in determining if the invention would have been obvious to one of ordinary skill in the art at the

time the invention was made.”) (emphasis added); In re Wallach,378 F.3d 1330, 1334 (Fed. Cir.

2004)(“[T]he state of the art has developed such that the complete amino acid sequence of a

protein may put one in possession of the genus of DNA sequences encoding it, and that one of

ordinary skill in the art at the time the [ ] application was filed may have therefore been in

possession of the entire genus of DNA sequences[.]”)(emphasis added).

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ABOUT THE AUTHOR

PROFESSOR HAROLD C. WEGNER is President Emeritus of The Naples

Roundtable, Inc., a Section 501(c)3 nonprofit organization that explores ways

to improve the patent system. https://www.thenaplesroundtable.org/

Prof. Wegner is a member of the bars of the District of Columbia, the

Supreme Court, and the Federal Circuit Court of Appeals. He is also registered

to practice before the U.S. Patent and Trademark Office.

Prof. Wegner is an independent patent consultant who focuses upon

complex matters of procurement strategy at the U.S. Patent Trademark Office

as well as inter partes matters at the Office under the Leahy Smith America

Invents Act of 2011 and opinions related thereto.

Contact Information:

Harold C. Wegner

1101 Pennsylvania Ave. N.W.; Suite 300

Washington, D.C. 20004

(202) 756-1084

(239) 653-9738

hwegner@gmail.com