2100 Patentability

Remove reference to Autogiro in MPEP 2163

Last Edited by Jason Liao

MPEP 2163 is about the Written Description requirement. MPEP 2163(II)(A)(3)(a) cited Autogiro as support for the following quote:

"An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole... Autogiro Co. of Am. v. United States, 384 F.2d 391, 398, 155 USPQ 697, 703 (Ct. Cl. 1967) ("In those instances where a visual representation can flesh out words, drawings may be used in the same manner and with the same limitations as the specification.");"


This citation is not on point for its intended purpose. Autogiro is about claim interpretation during litigation, and does not articulate a test for whether the written description demonstrates possession of the invention. Autogiro only refers to 35 USC 112 at four points: at 395-96 (to point out that 112 2nd exists); at 398 (to point out that the best mode requirement exists); at 403 (to interpret claim 3 of that particular application); and at 407 (To point out that an argued interpretation could raise a question of indefiniteness if the court adopted the proposed interpretation) None of particular citations were part of any discussion about drawings.


Of course, sometimes there is no decision that's on point (or at least, not one that's readily available) and one has to persuasively build up to the correct legal conclusion using inference from tangential decisions. That isn't the situation here; the first decision cited in support of the quoted conclusion in the MPEP is Vas-Cath v. Mahurkar, 935 F2.d 1555, 1565 (Fed. Cir. 1991). That page states "These cases support our holding that, under proper circumstances, drawings alone may provide a 'written description' of an invention as required by ยง 112." It's short, it's sweet, it's on point, and it's exactly the proposition the Office is trying to prove. Why dilute this strong position with a decision that is about claim interpretation?


Since Autogiro's inclusion in this section is not on point and is unnecessary, please remove it.



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Idea No. 270