Continuation Drafter
Tier B: written description and priority for continuation claims
9 authorities. Each is quoted from its primary source and checked against a cached copy.
The more you claim, the more you must enable
A unanimous Supreme Court held that a specification claiming an entire functionally defined class of antibodies must enable a skilled person to make and use the whole class, and that disclosing 26 working examples plus a screening protocol left scientists to random trial and error rather than enabling them.
Disclosing every possibility describes none of them
The Federal Circuit affirmed that earlier applications reciting a compendium of possible chemical substituents did not describe the subgenus claimed years later, so the patent lost its priority date and was anticipated by an intervening publication.
A narrower range inside a disclosed range is usually described
The Federal Circuit reversed a written-description finding and held that a claimed subrange narrower than any range the specification spells out is still described, where the technology is predictable, the limitation is simple, and nothing shows the subrange is a different invention.
The competitor's product became the prior art
The Federal Circuit reversed a jury verdict and held a continuation invalid, because the 2004 parent disclosed an enormous genus of peptide units without reasonably specific support for the 81-member subgenus claimed in 2019, so the patent lost its priority date and the competitor's publicly disclosed product anticipated it.
The specification did not change. The claims did.
The Federal Circuit affirmed that claims to a specific therapeutically effective dose were invalid for lack of written description, because the 2007 disclosure they claimed priority from was a drug-discovery document that mentioned the dose exactly once, inside a range, and the new claims were written in 2011 once clinical results were in.
The parent's own publication became the reference
The Federal Circuit affirmed that ranges added by amendment to a fifth continuation lacked written-description support in the 2009 parent, so the claims lost that filing date and were anticipated by the publication of the parent application itself.
Silence is not a description of absence
The Federal Circuit granted rehearing, vacated its own earlier affirmance, and held that a specification saying nothing about loading doses did not describe a claim limitation requiring their absence, because disclosure rather than silence is what written description needs.
The preamble is not free text
The Federal Circuit held that the limiting preamble of a Jepson claim must itself be supported by written description, so reciting the prior art in a preamble puts that recitation inside the support burden rather than outside it.
You did not invent what you did not disclose
The Federal Circuit held that a provisional disclosing C2-C12-alkyl does not provide written-description support for C1-alkyl, even where the applicant says the C2 was an obvious typographical error, so the later patent lost its priority date.