Some examiners are enamored with rejecting claims as lacking possession under Section 112. One reason might be is that the test seems highly subjective and is easily manipulated to apply in almost any case. Today we review a recent appeal by United Technologies where the Examiner has gone the extra mile to create rejections over a limitation that wouldn’t be given a second thought in most cases.
The application is 13/346,100 and the invention relates to a gas turbine engine. The limitation at issue is a gear system:
a gear system driven by the core engine to drive a fan within said fan nacelle at a speed different than both the first compressor and the second compressor, said gear system defines a gear reduction ratio of greater than or equal to 2.5.
The specification even explained that the gear system could be an epicycle gear train such as a planetary gear system. Clearly every mechanical engineer would understand that a planetary gear train can have a range of gear ratios. So what did the examiner do? They rejected the claim element asserting that the inventor lacked possession of the original claimed element because there was no upper limit, and thus the claim covered an infinite number of species too generically, citing Ariad. Never mind that Ariad is related to the highly unpredictable arts and a claim covering a vast genus of chemical compounds.
Likewise, the examiner also rejected the claim as not enabled. Here, the examiner went to some lengths, citing an article by the patentee touting the advantages of the claimed design and noting it took significant investment and time to optimize. According to the examiner, because it took the patentee so much effort, a person ordinarily skilled in the art would not have been able to make and use the invention from the specification.
In fact, the examiner essentially combined both of these arguments for each of the possession and enablement rejections. Fortunately, the PTAB made clear that the examiner’s approach here was clearly wrong, and provides some arguments that applicants should consider using when facing a possession/enablement rejection of this type. First, the PTAB addressed the fact that these issues are separate (citations omitted):
The issue here is written description, not enablement. The enablement requirement is discussed below. Written description requires only that the Specification demonstrates Appellant had possession of the claimed invention at the time the application was filed. See Ariad. That requirement is met here. Appellant’s Specification demonstrates the invention encompasses a gas turbine engine having a gear reduction ratio of greater than or equal to 2.5. Nothing more is required. The MPEP section cited by the Examiner concerns the discussion in Ariad relating to “a generic claim [that defines] the boundaries of a vast genus of chemical compounds,” and whether “the applicant has invented species sufficient to support a claim to a genus.” Such concerns do not apply here, where the challenged subject matter is a reduction ratio achieved by, for example, an epicycle gear train such as a planetary gear system. The Examiner does not explain why such a gear system could not achieve a reduction ratio that greatly exceeds 2.5. Therefore, we do not sustain the written description rejection of claim
Next the PTAB tacked the enablement rejection and that the decisive Wands factor here is the predictability of the art.
We appreciate that Appellant’s Specification in the foregoing regards is sparse, and Appellant’s figures are highly schematic (Wands factors (1)–(3)), thus requiring some amount of experimentation to implement the claimed invention. Nonetheless, “a patent need not teach, and preferably omits, what is well known in the art” (Wands factors (5)–(7)). Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik v. American Hoist & Derrick, 730 F.2d 1452, 1463 (Fed. Cir. 1984)). We determine the state of the art of gear systems was advanced, and gear systems were highly predictable, at the time of Appellant’s invention (Wands factors (5) and (7)). A person of ordinary skill in the art would have known how to change the size and configuration of various gears, such as in a planetary gear system, to achieve a desired gear reduction ratio (Wands factors (6) and (7)).
As to the breadth of the claims (Wands factor (8)), we determine a person of ordinary skill in the art would have appreciated that the claimed gear reduction ratio has an inherent, albeit not precisely known, upper limit. Scripps, 566 F.3d at 1572. The gear reduction ratio equals the rotational speed of the turbine-compressor spool, divided by the rotational speed of the fan. It is therefore mathematically limited by an inherent maximum rotational speed achievable by the turbine-compressor spool. This inherent maximal limitation arises from the finitely available airflow to drive spool rotation, the weight of the spool, the energy extraction work performed by the turbine, and the air compression work performed by the compressor. The ratio is, further, limited by an inherent minimum rotational speed of the fan, which is required to power the engine and fly the aircraft
So, do not let an examiner mix together possession and enablement - they are separate issues and are analyzed with different factors. While some facts may be relevant to both, be sure to individually address the relevant issues in the appropriate way so as not to let what some might consider an obstructionist rejection derail the whole application.