Distinguishing the prior art as “undesired” is equivalent to distinguishing it as “inferior” and may therefore limit the scope of the claims as necessarily excluding the undesired features. Here, for example, a broad claim added during an interference to cover a printing transfer layer that melts at a wide range of temperatures was found to lack written description support because the specification disparaged the prior art as producing an “undesired” result by melting at low temperatures below an ironing temperature. “We are not persuaded by the assertion that one skilled in the art would understand that an inventor possesses something that it deems undesirable, but not something that it deems inferior.” To balance the competing needs of distinguishing the prior art while not sweepingly excluding all prior art features from the scope of the claims, it may therefore be helpful to include any prior art feature disparaged in the specification within an example embodiment, at least to the extent that inventive and non-inventive features may be intertwined.
Background / Facts: The application on appeal here from interference proceedings at the PTO is directed to the transferring of printed images onto dark colored textiles by ironing over a specialty transfer paper. The copied claims added to provoke the interference recite a white layer that melts at a wide range of temperatures, including both above and below ironing temperatures (i.e., above and below 220°C). The specification focuses on a white layer that melts only above ironing temperatures, and characterizes prior art white layers that melt below ironing temperatures as producing an “undesired” result.
Issue(s): Whether the specification provides written description support for a white layer that melts above and below ironing temperatures as claimed by distinguishing the prior art not as “inferior” per se, but simply as “undesired.”
Holding(s): No. “[T]his is a distinction without a difference. We are not persuaded by the assertion that one skilled in the art would understand that an inventor possesses something that it deems undesirable, but not something that it deems inferior. An inventor aware of an ‘undesired’ embodiment theoretically could possess that invention, perhaps by including it in the description of a preferred embodiment in the specification. But that is not the question. For purposes of the written description requirement, ‘the subject matter of the counts [must] be described sufficiently to show that the applicant was in possession of the invention.’ [] Consequently, like in Tronzo, we find that [the applicant] does not possess a white layer that melts below 220°C because it specifically distinguished white layers that melt below 220°C as producing an ‘undesired’ result.”