Bilstad v. Wakalopulos
72 USPQ2d 1785 (Fed. Cir. 2004)
Facts
The Federal Circuit held that knowledge and predictability determine whether a disclosure of a species may support a claimed genus including that species. Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. In an interference action, the Board of Patent Appeals and Interferences concluded that Bilstad's claim 1 was unpatentable for lack of written description support under 35 U.S.C. § 112. While Bilstad's specification described manipulating objects in "a small number of directions," claim 1 recited "a plurality of directions." The Board construed "plurality" to connote an indefinite numerical range of two to infinity, i.e., at least two or greater, and thus concluded that Bilstad's specification provided insufficient written description of manipulations in a large number of directions to support a range bounded by two and infinity.
Bilstad asserts that disclosure of movement in two or three directions should support "plurality." The Fed. Circuit states that the question requires consideration of whether the Bilstad disclosure "reasonably conveys to a person skilled in the art that the inventor had possession of the claimed subject matter at the time of the earlier filing date." The general rule is that disclosure of a species provides sufficient written description support for a later filed claim directed to the broader genus. A first exception to this rule is unpredictability in a particular field. If a person skilled in the art would not readily discern that other members of a genus would perform similarly to the disclosed member, then disclosure of more species is necessary to show possession of the entire genus. A second exception is a disclaimer by the patentee.
Rules and Analysis
In the present case, the Board never discussed the understandings of persons skilled in the art and whether Bilstad's written description would reasonably convey to a person skilled in the art that Bilstad had possession of the claimed subject matter at the time of filing. The Board made no findings on the unpredictability in the art or on whether Bilstad disclaimed manipulation in a larger number of directions than the small number taught. "In the mechanical world - a fairly predictable field - it is wholly conceivable that manipulation in a small number of directions may convey to one skilled in the art that Bilstad indeed described manipulation in a 'plurality' of directions." The Court remanded for consideration of the knowledge of one skilled in the art and the level of predictability in the field. The test is whether Bilstad's disclosure, as of its filing date, would convey possession of manipulation in a plurality of directions.