Lack of Written-Description Support for Claimed Ranges Makes Parent Application Prior Art

Knobbe Martens

Knobbe Martens


Before Lourie, Linn, and Dyk.  Appeal from the Patent Trial and Appeal Board.

Summary: Claims of a continuation application were anticipated because they were not entitled to the filing date of a parent application that failed to support the ranges of numerical values claimed in the continuation.

Dr. Reddy’s Laboratories petitioned for inter partes review (IPR) of Indivior’s patent claims.  The Board held that the challenged claims, which issued from a continuation application, were not entitled to the filing date of a parent application.  According to the Board, the parent application lacked written-description support for numerical ranges recited in the challenged claims, so the parent application was prior art.  Because the parent application disclosed values within the claimed ranges, the Board held that it anticipated the challenged claims.  Indivior appealed.

The Federal Circuit found substantial evidence for the Board’s factual findings concerning the lack of written-description support.  Although some of the claimed ranges could be derived mathematically from certain entries in a table from the parent application, the Federal Circuit held that this table was insufficient to support the claimed ranges.

Judge Linn dissented, arguing that the majority ignored two precedential cases showing that the parent application provided adequate support for the claimed ranges.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens | Attorney Advertising

Written by:

Knobbe Martens

Knobbe Martens on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.