PTAB finds implied support for a negative limitation

In re Martin, Appeal 2019-004372, April 29, 2020

Appellant FMC Corporation is the Applicant of US Patent Application Serial No. 15/289,566, which is directed to growth media.  Claim 1 recites:

1.  A method for improving the growth of plant comprising applying a growth effective amount of a plant growth composition comprising a hydrated aluminum-magnesium silicate and at least one dispersant selected from the group consisting of a sucrose ester, a lignosulfonate, an alkylpolyglycoside, a naphthalenesulfonic acid formaldehyde condensate and a phosphate ester to plant propagation material in the absence of insect pest pressure, wherein the plant grown composition excludes an insecticidally active component.

The italicized phrase was added by amendment and elicited a written description rejection from the Examiner, who argued “There is no guidance in the specification to select the instantly claimed exclusion.”  Appellant argued that although the specification lacked specific support, it nonetheless provided  sufficient basis for the exclusion.  Specifically, Appellant argued that since the specification described that the claimed method was practiced in the absence of insect pressure.  If there is no pressure, Appellant argued, an insecticide would not be needed.  Further, Appellant argued, an Example had been provided with an inventive composition not including an insecticidal component as compared to a commercially available formulation containing a single specific insecticide.

The Examiner responded that lack of insect pressure at one point in time did not infer that insect pressure would never be present.  And, the Examiner argued that the comparative example may have provided support for the exclusion of the single specific insecticide, except that Appellant had not established that the only difference between the compositions was the insecticide.

The Board sided with Appellant, seemingly expanding the scope of support sufficient for a negative limitation beyond an express literal disclaimer, or, descriptions of the limitation as an alternative, to include support that may be implied from the specification.  The Federal Circuit cases cited in support of the Board’s decision are those with which practitioners would be familiar as refuting that a requirement for in haec verba support, i.e., Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) and ICU Med., Inc., v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377 (Fed. Cir. 2009)

It would be interesting to see if the Federal Circuit will agree.