Disclosure Of A Single Embodiment Can Provide Sufficient Written Description

Tobinick v. Olmarker

The U.S. Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB), finding that the disclosure of a single embodiment falling with the scope of the claims was sufficient to show that the inventors had possession of the invention.  Tobinick v. Olmarker, Case No. 13-1499 (Fed. Cir., May 19, 2014) (Reyna, J.)

In an interference proceeding, both parties claimed methods of treating spinal nerve injuries by locally administering—for example, via epidural—a TNF-α inhibitor therapeutic.  Spinal discs contain a fluid called "nucleus pulposus," which, when discs are herniated, leaks into the epidural space and often causes nerve damage and pain in other discs nearby.  Pain is caused by TNF-α present in this fluid, and thus inhibitors of TNF-α are effective pain treatments.