Lack of Written-Description Support for Claimed Ranges Makes Parent Application Prior Art

| Jeremy Anapol


Before Lourie, Linn, and Dyk. Appeal from the Patent Trial and Appeal Board.

Summary: Claims of a continuation application were anticipated because they were not entitled to the filing date of a parent application that failed to support the ranges of numerical values claimed in the continuation.

Dr. Reddy’s Laboratories petitioned for inter partes review (IPR) of Indivior’s patent claims. The Board held that the challenged claims, which issued from a continuation application, were not entitled to the filing date of a parent application. According to the Board, the parent application lacked written-description support for numerical ranges recited in the challenged claims, so the parent application was prior art. Because the parent application disclosed values within the claimed ranges, the Board held that it anticipated the challenged claims. Indivior appealed.

The Federal Circuit found substantial evidence for the Board’s factual findings concerning the lack of written-description support. Although some of the claimed ranges could be derived mathematically from certain entries in a table from the parent application, the Federal Circuit held that this table was insufficient to support the claimed ranges.

Judge Linn dissented, arguing that the majority ignored two precedential cases showing that the parent application provided adequate support for the claimed ranges.

Editor: Paul Stewart