CIVIL ENGINEERING & PATENT LAW  
This website illustrates how Civil Engineers may make greater use of the Global Patent System to Promote Progress in their Field.
The American Founders included Patent Rights in the United States Constitution to Promote Progress.
35 U.S.C. § 112
U.S. Patenting
     The provisions of 35 U.S.C. § 112 largely regulate the clarity of the Civil Engineering Patent Applicant’s claim language in describing an invention, and the adequacy of the patent application in supporting that claim language.  Some core requirements under 35 U.S.C. § 112 include the enablement and written description requirements of the statute section’s first paragraph, definiteness requirements under the section’s second paragraph, and functional claiming requirements of 35 U.S.C. § 112, sixth paragraph.  Patent attorneys draft patent applications with a careful eye toward 35 U.S.C. § 112 pitfalls that often reveal themselves during prosecution of unevenly drafted patent applications.  In general, U.S.C. § 112, first paragraph rejections present the greatest potential danger to patent applicants, particular with haphazardly or amateurishly drafted patent applications.  Civil Engineering Patent Applicants retaining patent attorneys should not worry much about the legal details of 35 U.S.C. § 112, as a competent lawyer charged with preparing and prosecuting the application will work to ensure that the application avoids 35 U.S.C. § 112 problems.      

     35 U.S.C. § 112, first paragraph sets forth U.S. patent law’s enablement and written description requirements.  The section also sets forth requirements for disclosing the “best mode” of an invention, but the 2011 Leahy-Smith America Invents Act largely neutralized most of the effects of "best mode" on Applicants.      

     Enablement requires that a patent application, at the time of filing, contains disclosure sufficiently clear and concise to enable a person of ordinary skill in the art to make and use the invention as claimed without undue experimentation.  The content of the written specification and drawings of a civil engineering patent application basically define the universe in which the Applicant can work during subsequent patent prosecution.  If the Applicant tries to make more than minor changes to the specification and drawings after filing, e.g., more than fixing mere typographical errors, the USPTO will often object to such changes as “new matter.”  In other words, the patent laws prevent Applicants from trying to expand the universe of their patent applications, after filing, by rejecting the additions as “new matter.”  Conversely, U.S. patent law liberally allows patent applicants to revise their originally-filed patent claims.  Therefore, though the patent claims arguably constitute the most important part of an application legally, the Applicant may change them significantly during prosecution.  In contrast, Applicants are largely stuck with their originally filed written specification and drawings if they wish to retain their original filing date.  Although Applicants may file a new “continuation-in-part” patent application with additional subject matter, they will lose their earlier filing date with regard to the additions, and the earlier application may actually transform into prior art against the later application in certain cases.   

     “New matter” problems infest hastily and poorly drafted patent applications, and normally come to light as Applicants try to amend their patent claims to overcome prior art cited by the Examiner.  As the unprepared Applicant struggles to amend the claims, all of the subject matter that the Applicant should have included in the application to support various claim amendments becomes apparent.  The Applicant also may realize that no useful claim amendments may be made without simultaneously provoking a “new matter” rejection from the USPTO Examiner, asserting that the patent application does not enable the proposed claim amendments.  As an example, imagine that the Civil Engineering Patent Applicant files a hastily drafted patent application regarding a concrete admixture, but fails to provide numerous ranges of experimental data showing the optimal material characteristics for using the admixture, even though that data was available at filing.  The Examiner rejects the claims using an old reference with general teachings about that type of admixture.  The Applicant looks to the patent application to respond to the rejection, but none of the useful detail about the invention, clarifying the novel features of the innovative admixture, is in the application to support claim amendments to get around the prior art.  Worse yet, foreign patent offices are generally stricter than the USPTO on supporting claims, so the Applicant’s foreign patent applications will be in even worse shape.  Needless to say, the frustration that grips the Applicant of a strong invention described in a weak patent application is intense.  “New matter” problems under the enablement prong of 35 U.S.C. § 112, first paragraph, lead to the abandonment of many patent applications.  Even if an Applicant tries to compensate for missing detail in an application by asserting that one of ordinary skill in the art would have obviously known to fill gaps in that detail, the Examiner may just retaliate with an obviousness rejection under 35 U.S.C. § 103.     

     Therefore, Applicants should include thoughtful detail in patent applications, particularly with an eye to supporting fallback claim amendments and narrower claims that can withstand strong prior art rejections and invalidity attacks by USPTO Examiners and also by skilled litigators if the patent is asserted.  Although practitioners disagree over the amount of detail that an application should include, patent attorneys will typically include every detail relating to an invention’s core novelty, because those details will show their value during prosecution by giving the Applicant flexibility in amending the claims.                         

     35 U.S.C. § 112, first paragraph also includes a written description requirement.  Although some judges on the Court of Appeals for the Federal Circuit have opined that the written description requirement should be completely merged back into the enablement requirement, the Federal Circuit made clear in 2010, en banc, that a separate written description requirement exists under 35 U.S.C. § 112, first paragraph.  Written description requires that the specification describes an invention understandable to a person of ordinary skill in the art, and ensures that the inventor actually invented and described the claimed invention.  Although numerous views exist, it seems that the reaction to the Federal Circuit’s recent jurisprudence on written description has been to limit the scope of patent claims based on the breadth of what the specification actually discloses.  In other words, if an Applicant tries to support broad claims with only a single narrow example in the specification, the Examiner or a court may possibly limit the reach of the patent claims to the narrow nature of the single example in the specification.  But just as a detailed and expansive patent application guards against enablement rejections as discussed above, so can a strong and detailed patent application, creating a wide universe of novel subject matter, also defend against encroachment of claim scope under the written description doctrine.        

     35 U.S.C. § 112, second paragraph polices definiteness by requiring that claims particularly point out and distinctly claim the subject matter that the Applicant considers as the invention.  Patent law falls into intellectual property law, and as with tangible property such as real property ownership of land, a patent must define the boundaries of the claimed property right.  So, Applicants can think of the claims as the deed description that marks out the invented intellectual property.  Examiners often make 35 U.S.C. § 112, second paragraph rejections of claims prior to issue to tighten up the meaning of the claims.  Typically, if an Examiner reads a claim and just does not understand what the Applicant is trying to say, then a 35 U.S.C. § 112, second paragraph rejection appears in the Examiner’s Office Action.  Although the Applicant usually overcomes these rejections by clarifying the claim language on its face, occasionally the Applicant must direct the Examiner to certain provisions in the specification to shed light on the claim language.  However, drafting claim language that one of ordinary skill in the art understands without having to refer to the specification is typically the best practice.        

     At least for civil engineering inventions, 35 U.S.C. § 112, sixth paragraph offers a glimpse into a somewhat dated claiming practice that Civil Engineering Patent Applicants should consider entirely avoiding.  Basically, if an Applicant recites “a means” for performing a certain function in the claims, the term “means” signals to an Examiner or a Court to look to the specification to find specific examples of the “means” to interpret claim scope.  Different schools of thought exist in the patent community regarding using 35 U.S.C. § 112, sixth paragraph, though the consensus seems to be moving away from using “means” in claims.  35 U.S.C. § 112, sixth paragraph may be going out of vogue because invoking this section tends to result in an interpretation of relatively narrow claim scope, which likely results in the Applicant being able to catch fewer patent infringers.  For the mechanical art of civil engineering, Applicants should consider just directly claiming their invention, using the plain and ordinary meaning of claim terms, rather than resorting to 35 U.S.C. § 112, sixth paragraph.  For example, the Applicant should probably claim structural members as, for example, “structural members,” as opposed to using a U.S.C. § 112, sixth paragraph formulation such as “a means for transferring load.”  Using this type of means plus function (e.g., "means" for the function of transferring load) only invites uncertainty by asking an Examiner or Court to pull the scope of “a means for transferring load” out of the drawings and specifications.    

     Some or all of the above sections of 35 U.S.C. § 112 may seem arcane to a civil engineer, because they fall into the esoteric province of lawyers.  The Civil Engineering Patent Applicant should probably consider leaving the provisions of 35 U.S.C. § 112, and their underpinnings in statutes, case law, and USPTO practice, to the patent lawyers.                  
Tappan Zee Bridge in New York
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