Ex Parte Fressola
27 U.S.P.Q. 2d 1608 (B.P.A.I. 1993)
- Fressola invented a new kind
of home planetarium that let you see the stars in 3-D. He filed a patent.
- Fressola's application
included a claim that said:
- A system for the display of
stereographic three-dimensional images of celestial objects as disclosed
in the specification and drawings herein.
- The USPTO denied the claim.
- The USPTO found that the
claim failed to point out and distinctly claim the subject matter of the
invention, so it did not meet the requirements of 35 U.S.C. §112 ¶2.
- The USPTO Board of Patent
Appealed and Interferences (BPAI) affirmed.
- The BPAI found that claims
which incorporate by reference
("...as disclosed in the specification and drawings...") are
not specific and distinct enough to meet the standards required by §112
- Statements that incorporate
by reference lack any fixed legal meaning and can lead to vagueness and
- The Court noted that there
are two ways that courts can consider how tightly defined a claim must be
in order to be valid.
- The central definition involves the drafting of a narrow claim
setting forth a typical embodiment coupled with a broad interpretation
by the courts to include all equivalent constructions.
- The peripheral
definition involves marking out the
periphery or boundary of the area covered by the claim and holding as
infringements only such constructions as lie within that area.
- The Court found that the US
uses the peripheral system, and so
claims must be very tightly defined. Fressola's claim was not definitive
enough to be valid.
- Basically, under US law, this
sort of claim is invalid because it does not itself define the invention
but instead relies on external material.