April 18, 2013

Federal Circuit Decisions for Week Ending April 5, 2013

In re Morsa, No. 2012-1609 (April 5, 2013) (precedential) (3-0) U.S. Patent Application No. 60/211288

Key point:

  • An argument that a prior art reference is not enabling does not require that the applicant provide affidavits or declarations in support of his position. Rather, identifying specific and concrete reasons why the applicant believes that a reference is not enabling may be sufficient.

Saffran v. Johnson & Johnson, No. 2012-1043 (April 4, 2013) (precedential) (3-0) U.S. Patent No. 5,653,760

Key points:

  • Prosecution disclaimer requires “clear and unambiguous disavowal of claim scope,” but applicants rarely submit affirmative disclaimers along the lines of “I hereby disclaim the following…” during prosecution and need not do so to meet the applicable standard.
  • Under § 112, ¶ 6, structure in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.

Related Team: