September 12, 2022—
[Ed. Note: Beusse Sanks Patent Agent/Attorney Lisa D. Velez walks us through some of the technical precision required when drafting a patent application and the inventor claims the *absence* of something as part of their invention (a “negative claim limitation”)]
USPTO guidance (MPEP §2173.05(i)) provides instructions for the use of a negative claim limitation. When a claim includes “exclusionary” terms, language or phrases, the original disclosure must provide a basis for the recitation. Absent such support for the negative claim limitation, the claims can be rejected under 35 U.S.C. 112(a). Be forewarned that just because the specification lacks description, the mere absence of a “positive recitation is not a basis for exclusion.” MPEP 2173.05(i).
Several recent USPTO Examiner negative limitation rejections were appealed to the Patent Trial and Appeal Board (PTAB) under 35 U.S.C. 112(a) but were not persuasive, as explained below.
Examples of terms or phrases on appeal as negative limitations included “without further support,” “does not modulate data,” “absence of data modulation,” “no electrical wires,” “non-yoghurt materials,” and “seamlessly.”
In each of these examples, the specifications before the PTAB did not provide an explicit recitation of any of these terms or phrases. Nonetheless, “[a]s with all other limitations, the negative limitation … must be accompanied by an original disclosure which conveys to a person of ordinary skill that the inventor was in possession of the claimed invention.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 21 F.4th 1362, 1374 (Fed. Cir. 2022). (Ex parte John Talbot Boys (Appeal No. 2021-03765), pg. 5.)
Examples of rejections based on negative limitations will now be described.
In Ex parte STEPHAN SCHRECKENBERG (Appeal 2021-002859), the Examiner rejected the written description for a negative claim limitation reciting “without further support.” (Ex parte STEPHAN SCHRECKENBERG (Appeal 2021-002859), pg. 4 ln. 14-16)). However, on appeal, the PTAB found the Examiner erred because the specification described “a fixation ‘effected exclusively via the mounting structure.’” Id. at ln. 17-18 (Emphasis added).
In Ex parte MICHAEL McCAGUE et al. (Appeal 2021-005150), the Examiner concluded that the recitation “no electrical wires” is a negative limitation and found that the original disclosure was silent as to whether electrical wires enter the electrode cartridge or are attached thereto as claimed. (Ex parte MICHAEL McCAGUE et al. (Appeal No. 2021-005150)). Although the exact phrase “no electrical wires” was not disclosed, the Appellant argued that the specification “employs spring arm contacts on the sides of the electrode cartridge which come into engagement with corresponding contacts on the internal surface of the mating housing to supply power to the electrodes… one skilled in the art would recognize that the inventors were not employing wires entering or attached to the cartridge to supply power to the electrodes and thus had ‘actually invented’ an electrode cartridge wherein no wires enter or are attached to the cartridge.” The PTAB was persuaded by the Appellant’s argument.
Also in Ex parte MICHAEL McCAGUE (Appeal 2021-005150), the term “seamlessly” was found to be a negative limitation meaning “do not have seam.” The Appellant’s specification included a description of “electrodes… formed as single piece” and description of “electrodes… formed of multiple parts.” The PTAB found that “a single electrode formed as a single piece is not formed of multiple parts but rather is formed from a single piece of material and is ‘seamless.’”
In the above examples, the Specification provided implicit support for the negative limitations. Not so, below.
In Ex parte JOHN TALBOT BOYS (Appeal No. 2021-03765), the Examiner found that there was no written description support for the negative limitations (italicized language) in “wherein the pickup comprises a high Q coil that is configured for power transfer in the absence of data modulation,” and “wherein the pickup does not modulate data, or decode modulated data, in the inductive power received via the pickup coil.” The Appellant’s argued that “the absence of … discussion in the Specification is sufficient to demonstrate that a person of ordinary skill in the art would have understood that the inventor was in possession.” On the contrary, the PTAB found that the Examiner “provided a reasonable basis to conclude that data modulation would inherently occur.”
And, in Ex parte HIROMASA SUZUKI et al. (Appeal 2022-000353), the Examiner found that ‘non-yoghurt materials’ as recited in claim 7 is a negative limitation. According to the Examiner, “an ordinary artisan would have understood ‘non-yoghurt material’ to exclude any ingredient one might normally find in a yoghurt, including dairy products and lactic acid bacterium material. (Ex parte HIROMASA SUZUKI et al., pg. 5 ln 25 through pg. 6, ln. 2.) Since “non-yoghurt materials” was a negative limitation in the claim, the specification needed to describe the nature of those materials. On appeal, the PTAB agreed and found that the “Appellant fails to direct our attention to any expressed reason to exclude yoghurt materials, and specifically, dried yoghurt starter cultures” (emphasis added). Hence, the Examiner’s rejection was sustained. Moreover, the Appellant’s interpretation of “using non-yoghurt material” was inconsistent with the invention’s milk powder and lactic acid bacterium ingredients, which were expressly described as yoghurt-materials and not “non-yoghurt materials”.
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