September 28, 2023


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Written Description as a Subset of Novelty and Nonobviousness

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Written Description as a Subset of Novelty and Nonobviousness

by Dennis Crouch

Zahner Style and design Group v. Vidal (Supreme Court 2022)

D746,078 (Patent being litigated)

Zahner’s Structure Pat. D746,078 addresses the decorative style of a shower curtain as shown in the figures previously mentioned.  Zahner sued Katri Income for infringement, and the defendant turned-all around and submitted a ask for for ex parte reexamination. The examiner identified some good prior art from 2013, which predates this specific structure software filing date. But, the style patent also claimed precedence to Zahner’s prior utility patent application (Serial No. 09/617,402) that predates the reference. The utility software includes a selection of drawings that are very similar-to, but not just the exact same as individuals in the Structure Patent. (Pictures under).

The primary issue in the case then was irrespective of whether the precedence drawings offer ample published description assist for the eventual design as claimed.

09/617,402 (Priority submitting)

The PTAB discovered the style and design assert was not sufficiently supported by the priority disclosure and so the priority claim was invalid.  And, with no the precedence claim, the creation experienced turn out to be obvious by the time of the later on genuine filing date. The essential dilemma, can be observed in the design patent’s point of view look at shown below.   The viewpoint displays that the internal area of the aperture is flat and with right-angled edges.  According to the PTAB, all those functions are new to the style and design patent and not disclosed by Figure 21 of the precedence filing.  On attractiveness, the Federal Circuit affirmed with out view.

Close-up of the Design Patent drawing

Zahner disagrees with the merits of the selection here, but has also suggested that it will elevate procedural worries in an approaching petition for writ of certiorari.  In certain, Zahner intents to elevate the exact same query that Arthrex will likely raise, while this time in the reexamination context:

Query: Does the Reexamination Statute permit a problem to precedence promises?

Zahner has also argued that its condition is particularly egregious mainly because the priority problem was especially addressed by the examiner during the original prosecution.  That is significant for the reason that reexaminations are confined to “new” thoughts of patentability.

Right after obtaining the R.36 no-view affirmance, Zahner submitted a petition for panel rehearing that bundled the pursuing line: “A written feeling on this concern is respectfully requested.”  The Federal Circuit although denied the petition without impression.   This problem consequently raises the concern I resolved in my 2017 paper titled Wrongly Affirmed with out Opinion. In that paper, I argue that these no-belief judgments are contrary to the statutory prerequisite of Area 144 necessitating the courtroom to difficulty an viewpoint in appeals from the PTO. Though this argument has been raised in dozens of cases, the courtroom has not yet responded to the argument, and the peculiar procedural setup permits this status quo.  In a latest request for extension of time, Zahner indicated to the Supreme Courtroom that it also programs to elevate the no-belief concern.

I pointed out Arthrex previously mentioned, its petition to the Supreme Courtroom will be owing in November 2022.  In its failed petition for rehearing on the IPR-priority situation, Arthrex asked the following concern:

Irrespective of whether 35 U.S.C. § 311(b)’s restriction “only on a floor that could be raised underneath part 102 or 103” permits IPR issues that count only on compliance with the created description need of part 112.

Arthrex en banc rehearing petition.

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