申請專利範圍的解釋

【請求項】申請專利範圍的解釋

Johnson Worldwide v. Zebco175 F.3d 985 (Fed. Cir. 1999)Before MAYER, Chief Judge, CLEVENGER, and GAJARSA, Circuit Judges.

We begin, as with all claim interpretation analyses, with the language of the claims. . . . The general rule is, of course, that terms in the claim are to be given their ordinary and accustomed meaning. . . . General descriptive terms will ordinarily be given their full meaning; modifiers will not be added to broad terms standing alone. See, e.g., Virginia Panel Corp. v. MAC Panel Co., 133 F.3d 860, 865-66, 45 U.S.P.Q.2D (BNA) 1225, 1229 (Fed. Cir. 1997) (unmodified term "reciprocating" not limited to linear reciprocation); Bell Communications, 55 F.3d at 621-22, 34 U.S.P.Q.2D (BNA) at 1821 (unmodified term "associating" not limited to explicit association); Specialty Composites v. Cabot Corp., 845 F.2d 981, 987, 6 U.S.P.Q.2D (BNA) 1601, 1606 (Fed. Cir. 1988) (unmodified term "plasticizer" given full range of ordinary and accustomed meaning). In short, a court must presume that the terms in the claim mean what they say, and, unless otherwise compelled, give full effect to the ordinary and accustomed meaning of claim terms. . . .

解釋申請專利範圍的通用規則是：請求項中的用語必須是一般及慣常的意思。但是在下列兩種情況下，必須將它解釋成其他意思。

Our case law demonstrates two situations where a sufficient reason exists to require the entry of a definition of a claim term other than its ordinary and accustomed meaning. The first arises if the patentee has chosen to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term. . . . . The second is where the term or terms chosen by the patentee so deprive the claim of clarity that there is no means by which the scope of the claim may be ascertained from the language used. . . . . In these two circumstances, a term or terms used in the claim invites--or indeed, requires-- reference to intrinsic, or in some cases, extrinsic, evidence, see Vitronics (reference to extrinsic evidence is proper when intrinsic evidence cannot resolve ambiguity in claim language), to determine the scope of the claim language.

【請求項】申請專利範圍的解釋

【請求項】申請專利範圍的解釋

Vitronics v. Conceptronics90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996)
Indeed, if "solder reflow temperature" were defined to mean liquidus temperature, a preferred (and indeed only) embodiment in the specification would not fall within the scope of the patent claim. Such an interpretation is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.

解釋後的申請專利範圍，應該包含說明書的較佳實施例，如果不包含也應該要有具說服力的證據支持。

【請求項】多項制

【請求項】多項制

附屬項的範圍通常都被獨立項的範圍所包含，因此，專利說明書的請求項為何採用多項制？雖然採用“多項制”在目前的眼光下，幾乎是理所當然的，至於為什麼，這個問題小弟也幾乎懶得去想了。也對！因為想了理由又如何？不論有沒有答案，大家的作法都是一樣的，不過，今天看到一篇文章（事實上它是一本免費的電子書），覺得也許可以試著聽聽法官們怎麼解譯（他是一個“當時還是地方法官的“法官的opinion），順便整理一下我覺得有趣的幾段文字。
專利說明書內包含技術和法律兩個層面，所以要撰寫專利說明書是很困難的，而這種難處早在1892年就被最高法院的法官所承認的：
This land is even more fantastical when populated with patents, for a patent attempts to combine the particular challenges of a specialized field of technology with the separate challenges of a particularized field of law.
The Supreme Court recognized the difficulty of patent drafting over a century ago when it observed: The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy. . . .
Topliff v. Topliff, 145 U.S. 156, 171 (1892).
另外，撰寫專利說明書內的“權利範圍”，它的難處可分成兩面來看：
However, claim breadth cuts both ways: a patent applicant must keep its claims sufficiently narrow to avoid sweeping in the prior art, but sufficiently broad to encompass the accused devices or processes. Often, the applicant must do this before it is aware of all the relevant prior art and before the accused device even exists.
就是因為這個原因，專利的權利範圍，適合採用“多項制”。
In his usual style, then-District Judge Hand discussed the practice of differentiating an invention from the prior artby drafting claims of varying breadth:
There is nothing improper, so far as I can see, in first putting your claims as broadly as in good faith you can, and then, ex abundanti cautela, following them successively with narrower claims designed to protect you against possible anticipations of which you are not yet aware. Indeed, the very case upon which the defendant relies (Matheson v. Campbell, 78 Fed. 910, 917, 24 C.C.A. 384) shows the necessity of claims as broad as one can honestly support.

說明書

United States Court of Appeals for the Federal Circuit
03-1528

Bilstad v. Wakalopulos


This court then distinguished In re Smythe by explaining that the Board properly found that this particular field was unpredictable. "Unlike the circumstances In re Smythe presented, the instant facts present a case in which there is 'unpredictability in performance of certain species or subcombinations other than those specifically enumerated’’.

Thus, unpredictability in the particular field may warrant closer scrutiny of whether disclosure of a species is sufficient to describe a genus.
The distinction in these cases is based upon what would be reasonably conveyed to a person skilled in the art at the time of the original disclosure. If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.

如果說明書僅是揭示幾個下位概念的實施例，能不能請求上位概念的範圍，關鍵在於此領域是否屬於“可預期的”，而能不能預期的舉証責任，通常在於申請人。

【說明書】enablement requirement

05-1062

LIZARDTECH, INC., v. Earth Resource Mapping Ltd.

Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine. The single embodiment would support such a generic claim only if the specification would “reasonably convey to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of filing.

Thus, a patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed.

While it is true that an originally filed claim can provide the requisite written description to satisfy section 112

一個“enablement requirement”的判決

如果一份說明書僅揭示一種實施例，若要請求較廣的範圍時，必需是「the specification would “reasonably convey to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of filing.」

原本的請求項文字說明，是可以用來當作“written description”來滿足112條的“enablement requirement”。但本案的請求項21的文字說明並無法令該行業者了解“the inventor had possession of the claimed subject matter at the time of filing.”。

自己的想法：
為取得較大的權利範圍，請求項的文字通常較“廣泛”，因此要滿足該行業者了解“the inventor had possession of the claimed subject matter at the time of filing.”會比較小，我覺得。所以，最好於說明書中提供較多的實施例，較能確保對發明的保護。

【請求項】數值限定發明

【請求項】數值限定發明

這是一個數值限定發明的判例，讀它只是因為想了解怎麼“思考”數值限定發明。

判例
IN RE LANCE G. PETERSON and IOANNIS VASATIS

第一步考慮“A. The Prima Facie Case of Obviousness ”

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art.

下列雖然是判例中的文字，但它大部份的內容都可以在MPEP 2144.05找得到。

In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness. E.g., In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936-37 (concluding that a claimed invention was rendered obvious by a prior art reference whose disclosed range (“about 1-5%” carbon monoxide) abutted the claimed range (“more than 5% to about 25%” carbon monoxide)); In re Malagari, 499 F.2d at 1303, 182 USPQ at 553 (concluding that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (0.020-0.035% carbon) overlapped the claimed range (0.030-0.070% carbon)); see also In re Geisler, 116 F.3d at 1469, 43 USPQ2d at 1365 (acknowledging that a claimed invention was rendered prima facie obvious by a prior art reference whose disclosed range (50-100 Angstroms) overlapped the claimed range (100-600 Angstroms)). We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium” would have been prima facie obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium).

第二步考慮“B. Rebuttal of the Prima Facie Case”

要反駁Prima Facie Case，僅是單單一個下位概念的範圍具有不可預期的效果是不夠的，必須是相對於整個“要申請專利之範圍”的範圍，具有不可預期的效果才可。

We turn next to Peterson’s attempt to rebut the prima facie case of obviousness. In general, an applicant may overcome a prima facie case of obviousness by establishing “that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Geisler, 116 F.3d at 1469-70, 43 USPQ2d at 1365 (alteration in original) (quoting In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936). That same standard applies when, as here, the applicant seeks to optimize certain variables by selecting narrow ranges from broader ranges disclosed in the prior art. See In re Geisler, 116 F.3d at 1470, 43 USPQ2d at 1365 (“Only if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range.” (quoting In re Antoine, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977))); In re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976) (recognizing that “ranges which overlap or lie inside ranges disclosed by the prior art may be patentable if the applicant can show criticality in the claimed range by evidence of unexpected results”). Moreover, the applicant’s showing of unexpected results must be commensurate in scope with the claimed range. See In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” (quoting In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971))).

【請求項】數值限定及均等論

【20061103】更新
【請求項】數值限定及均等論

先前曾寫過一篇blog，內容提及日本法院拒絕數值限定發明適用均等論，因為數值限定發明的本質部分在於數值本身. 當然如果用數值來限定的發明，亦即其本身已具有新穎性，數值限定並非其本質部分，那麼這種用數值來做限定的發明則可適用均等論.

這介紹一個美專判決，摘錄：

「We therefore do not find a basis for precluding Abbott from relying on the doctrine of equivalents simply because the claim recites numeric ranges for the components of the claimed surfactant.」

不僅因“用數值來限定發明”，即判定不得適用均等論. 數值限定發明能不能適用均等論要依個案為主。

【20061103】更新
美國判斷能不能適用均等論的方式是先判斷適不適用禁反言、及先前技術阻卻；這不同於日本的五個要件（其中之一就是本質要件，即發明的本質部分不得適用均等論）。不過，詳細看看還是可以找到一些小小相同的地方，即

On the contrary, the addition of free fatty acids distinguished the surfactant claimed by the ’839 patent from the surfactant described by the ’301 patent. The addition of free fatty acids is no less significant with respect to the hypothetical claim and, on this basis, an examiner could have determined that the hypothetical claim was nonobvious.

加入一個元件，即可與舊技術做區別，所以free fatty acids 才是本質的部分，因此此案可以不適用本質要件。


判決 01-1374
ABBOTT LABORATORIES and
MITSUBISHI-TOKYO PHARMACEUTICALS, INC.
(formerly known as Tokyo Tanabe Co., Ltd.),
v.
DEY, L.P. and DEY, INC.,

The fact that a claim recites numeric ranges does not, by itself, preclude Abbott from relying on the doctrine of equivalents. For example, in Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 54 USPQ2d 1086 (Fed. Cir. 2000), the claim at issue was for a porcelain composition that recited numeric percentage ranges for each component of the composition. While this court agreed with the Jeneric/Pentron district court’s claim construction that the claim language “indicates that the invention’s chemical components should be limited to the precise ranges set forth therein,” we also stated that “the district court will have the opportunity to adjudicate fully the merits of infringement under the doctrine of equivalents.” Id. at 1381, 1384, 54 USPQ2d at 1089, 1091. Thus, while the numeric ranges limited the literal scope of the claims, we did not preclude Jeneric/Pentron from applying the doctrine of equivalents simply because the claim recited numeric ranges for the components of the claimed composition. Likewise, in Forest Laboratories, we applied the doctrine of equivalents to the water element of claim 1 of the ’839 patent, which requires 2.1%-5.2% water. See Forest Labs., 239 F.3d at 1313, 57 USPQ2d at 1800. We therefore do not find a basis for precluding Abbott from relying on the doctrine of equivalents simply because the claim recites numeric ranges for the components of the claimed surfactant.

禁反言
The first step in a prosecution history estoppel analysis is to determine which claim limitations are alleged to be met by equivalents. Then, the court must determine whether the limitations at issue were amended during prosecution of the patent. If they were not, amendment-based estoppel will not bar the application of the doctrine of equivalents. However, even if the claim limitation has not been amended, an argument-based estoppel may nevertheless arise based on statements made by the applicant during prosecution.

申請過程禁反言分成兩種： amendment-based estoppel 及argument-based estoppel 。

先前技術
A pioneer patent by definition will have little applicable prior art to limit it, whereas an improvement patent’s scope is confined by the existing knowledge on which the improvement is based. See, e.g., Augustine Med., Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1301, 50 USPQ2d 1900, 1907 (Fed. Cir. 1999) (“Without extensive prior art to confine and cabin their claims, pioneers acquire broader claims than non-pioneers who must craft narrow claims to evade the strictures of a crowded art field.”). However, the fact that a patent is an improvement patent does not automatically preclude application of the doctrine of equivalents. “That a claim describing a limited improvement in a crowded field will have a limited range of permissible equivalents does not negate the availability of the doctrine [of equivalents] vel non.” Warner-Jenkinson, 520 U.S. at 27 n.4.

先驅專利可以具有較大的均等範圍，而僅是改良的部分具有較小的改良空間。

PS：對於禁反言的適用及先前技術阻卻的適用方式，不太清楚的我，這一篇給了我很多的教導，我覺得很值得推薦給對這兩個適用方式不清楚的人看。