Bottom line: An application for patent generally focuses on the preferred embodiments of the invention but it may be prudent to also include alternative non-preferred embodiments. One reason for including these alternative embodiments is to provide a buffer zone around the preferred embodiments of the invention to prevent others from obtaining a patent on these other alternative embodiments by creating prior art to be used against others. Kennametal, Inc. v. Ingersoll Cutting Tool Company (Fed. Cir. 2015) was peripherally related to this issue.
Kennametal’s patent related to a cutting tool containing ruthenium as a binder which was coated using a physical vapor deposition (PVD) process. Ingersoll (Defendant) petitioned the Patent Office to reexamine Kennametal’s patent based on a prior art patent reference, namely, the Grab patent which expressly disclosed all of the limitations of Kennametal’s claimed invention except for the method of applying the ruthenium binder via PVD.
The prior art Grab reference mentioned ruthenium being applied with the PVD method but did so as a side note by stating that:
“However, applicants also contemplate that one or more layers of a coating scheme may be applied by physical vapor deposition (PVD).”
Kennametal argued that Grab did not disclose the PVD method of applying ruthenium because the examples provided in the Grab reference focused on two other unrelated preferred methods of applying the ruthenium binder. The Grab reference only disclosed the PVD method as one that is only “contemplated”.
Kennametal (patent owner) argued that one could not “immediately envisage” ruthenium being applied by PVD based on the Grab reference, and thus, the Grab reference cannot be characterized as disclosing such information in order to invalidate Kennametal’s patent. The Grab reference disclosed a number of different base materials and combinations thereof and three different methods of applying all of the possible materials. According to Kennametal (i.e., patent owner), a total of 10,881 different combinations of binder materials and processes for applying the binder materials existed within the disclosure of the Grab reference. The patent owner asserted that the large number of possibilities negated the disclosure of any one specific combination except for those that are “immediately envisaged” by the description of the Grab reference. The specific examples highlighted in the specification are immediately envisaged and disclosed in the specification but what about the other combinations?
The Federal Circuit reasoned that since Claim 5 of the Grab reference recited 5 different materials (including ruthenium) applied with a coating method and the Grab patent disclosed only three different coating methods, one of which was PVD, the Grab patent disclosed only 15 different combinations, not 10,881 combinations. Grab’s express “contemplation” of the PVD method was sufficient evidence that one would immediately envisage applying ruthenium as a binder via PVD.
In this situation, the prior art Grab reference prevented others, specifically, Kennametal from securing a patent that covered the application of ruthenium as a binder via PVD. Kennametal v. Ingersoll thus condones use of the following phrase which is included in many patent applications, specifically, “other ways or means or components are also contemplated including but not limited to [insert list of alternatives].” As another patent drafting tip, Kennametal v. Ingersoll also reinforces the notion that inventors may want to also include alternative embodiments to prevent others from securing a patent on other methods that one might believe is less favorable at the time of filing of the patent application but which may become the preferred embodiment at a later date or be a good competitive alternative to the preferred embodiment. By including these alternative embodiments, prior art is created that can be used against your competitors. Moreover, to the extent that one might want to claim these alternative embodiments at a later date, the specification must enable these alternative embodiments.
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