In re Ghiron

Citation: Citation: In re Ghiron, 442 F.2d 985, 169 U.S.P.Q. (BNA) 723 (BNA) (C.C.P.A. 1971).

Method claims were rejected for insufficient disclosure. The only description of apparatus was in the form of "block diagrams" indicating the various elements of the system. The specification did not identify the elements, their interrelationship, nor a particular apparatus intended to carry out each function.

To rebut this rejection, appellants referred to a textbook, which they claimed showed computer components and circuits, and to certain classes in the Patent Office classification system (apparently relating to computer circuits). They asserted that these references made it clear that the selection and assembly of the components required to perform the claimed method were "well within the skill of person of ordinary skill in the art}persons of ordinary skill in the art."

The court found this "evidence" to be "meager" and the argument to be conclusionary. It reasoned that this "showing is not persuasive that a person of ordinary skill in the art would be able to provide apparatus for practicing the present invention from appellant's drawing taken in connection with their specification." In addition, the court held that this "evidence" did not demonstrate that such a person would be taught how to modify previously known "overlap mode" computers to practice the invention.

The court specifically held that even where a claim was to a "method," adequate disclosure of the particular apparatus required to practice the method was still necessary.