No. 19-8094

Caleb S. Motupalli v. Andrei Iancu, Director, United States Patent and Trademark Office

Lower Court: Federal Circuit
Docketed: 2020-03-24
Status: Denied
Type: IFP
Response WaivedIFP
Tags: 35-usc-112 america-invents-act enablement interdisciplinary-invention interdisciplinary-team patent-enablement patent-examination patent-specification pre-aia pro-se single-skilled-person waiver
Key Terms:
Patent Privacy JusticiabilityDoctri
Latest Conference: 2020-04-17
Question Presented (from Petition)

35 U.S.C. §112 requires that the specification of a patent application describe the invention in such terms that those skilled in the art are enabled to make and Use the claimed invention; The purpose of this requirement is to ensure that the invention is communicated to the interested public in a meaningful way. With computer applications, it is not unusual for the claimed invention to involve two areas or more of prior art, or more than one technology. Typically, corporates have separate departments that deal in specializations, and are collectively enabled to make and use such inventions. It is also reason why patent offices elsewhere have three examiners examining a single patent application for maintaining objectivity. "Where different arts are involved in the invention, the specification is enabling if it enables persons skilled in each art to carry out the aspect of the invention applicable to their specialty." In re Naquin, 398 F.2d 863, 866, 158 USPQ 317, 319 (CCPA 1968)). Also, "the Board stated appellants' disclosure must be held sufficient if it would enable a person skilled in the electronic computer art, in cooperation with a person skilled in the fuel injection art, to make and use appellants' invention." In Ex parte Zechnall, 194 USPQ 461 (Bd. App. 1973). MPEP 2164.05(b).

A. Does the Leahy-Smith America Invents Act ("AIA") permit the United States to retroactively apply a scintilla of inadequacy in Pre-AIA to overturn precedent by insisting that it be a single person working alone having a single skill who must be enabled to make and use the full scope of the specification?

B. Whether 35 U.S.C. §112 Statute is satisfied when the specification of a patent application is enabling to an interdisciplinary team of two or three persons, working in cooperation?

C. Whether pro se filings can be rejected merely based on an alleged "waiver" by Petitioner in addressing Examiner's Rejections.

Question Presented (AI Summary)

Does the Leahy-Smith America Invents Act (AIA) permit the retroactive application of a scintilla of inadequacy in Pre-AIA to overturn precedent by insisting that it be a single person working alone having a single skill who must be enabled to make and use the full scope of the specification?"

Docket Entries

2020-04-20
Petition DENIED.
2020-04-02
DISTRIBUTED for Conference of 4/17/2020.
2020-03-30
Waiver of right of respondent Iancu, Andrei to respond filed.
2020-03-12
Petition for a writ of certiorari and motion for leave to proceed in forma pauperis filed. (Response due April 23, 2020)

Attorneys

Caleb S. Motupalli
Caleb Motupalli — Petitioner
Iancu, Andrei
Noel J. FranciscoSolicitor General, Respondent