Didn’t Cut the Mustard: PTAB Finds Claims Lacked Written Description and Enablement, PTAB Litigation Blog

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A recent post-grant review decision once again reminds patentees of the increasing scrutiny that claims are facing under the written description and enablement requirements under 35 U.S.C. § 112 (a).  In this case, Commonwealth Scientific and Industrial Research Organisation (“Petitioner”) filed a petition requesting post-grant review of claims 1-23 from U.S. Patent No. 10,301,638 (“the ’638 patent”) owned by BASF Plant Science GMBH (“Patent Owner”). The ’638 patent relates to a process for the production of various long chain fatty acids in a transgenic Brassica plant by introducing nucleotide sequences coding for polypeptides with different elongase and desaturase activity, and claims the resulting oils, lipids and/or fatty acids. After close review of the examples presented in the ’638 patent, the Board found all of the claims unpatentable for failing to comply with the written description and the enablement requirements.

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