Functional Language Found Definite by CAFC

In BASF Corporation v. Johnson Matthey (decided Nov. 20, 2017), the Court of Appeals for the Federal Circuit held that a “composition…effective to catalyze” is definite under the standard set forth in Nautilus v. Biosig.  As this case shows, such language can be definite, but care should be taken when drafting the application to ensure that the claim informs a person having ordinary skill in the art about the scope of the invention with reasonable certainty, as required by Nautilus

Claim 1 reads as follows:

1. A catalyst system for treating an exhaust gas stream containing NOx, the system comprising:

at least one monolithic catalyst substrate having an inlet end and an outlet end; an undercoat washcoat layer coated on one the outlet end of the monolithic substrate and which covers less than 100% of the total length of the monolithic substrate, and containing a material composition A effective for catalyzing NH3 oxidation;

an overcoat washcoat layer coated over a total length of the monolithic substrate from the inlet end to the outlet end sufficient to overlay the undercoat washcoat layer, and containing a material composition B effective to catalyze selective catalytic reduction (SCR) of NOx; and

wherein material composition A and material composition B are maintained as physically separate catalytic compositions.

The District Court interpreted the terms “effective for catalyzing” and “effective to catalyze” as indefinite because these terms “recite a performance property the composition must display, rather than its actual composition,” and the claim did not “recite a minimum level of function needed to meet this ‘effective’ limitation nor a particular measurement method to determine whether a composition is ‘effective” enough to fall within the claims.”

The CAFC reversed, noting that the “mere observation of information not ‘recited’ does not answer the question whether a person of ordinary skill in the art would need to be given the level and measurement information to understand, with reasonable certainty, whether a composition is ‘effective to catalyze.’”  The CAFC concluded that it is the arrangement of the catalysts, rather than the selection of the particular catalysts, that distinguishes the claim around the prior art.  Indicating that the specification provided example material compositions that are “effective” to catalyze, as well as figures and tables showing the benefits of the arrangement of the catalysts, the CAFC noted that, “As a result, the claims and specification let the public know that any known SCR or AMOx catalysts can be used as long as they play their claimed role in the claimed architecture.”

Since functional language like that discussed above can be subject to indefiniteness arguments, such language can increase the breadth of the claim.  One strategy is to include both an independent claim with functional language and another, similar, independent claim without functional language, if the facts of the case support such a strategy.  The independent claim without functional language may be narrower, but, in the event infringement can still be proven, is also free of potential validity arguments surrounding the functional language.

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