Merely Scaling Up of a Known Process is Not Patentable

Sometimes it is hard to know what the U.S. Patent Office will decide when allowing some patent claims over others. How much novelty is needed? The Manual of Patent Examining Procedure gives some guidance, and mere changes in size or dimension over a known solution is not enough. MPEP (MPEP) 2144.04(IV)(A) references two cases:

  • In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) — Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.
  • In re Rinehart, 531 F.2d 1048, 1053, 189 USPQ 143, 148 (CCPA 1976) — “mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.”

Some lessons from these cases are self-evident. Patent application drafters need to include enough detail in the technical description of the invention. While a lot of research money may be spent on scaling up a design, if there are no details as to how scaling up presented additional problems, and no details about how these problems were overcome, a set of patent claims will not be allowed just because there is claim to a large-scale facility. A patent will not be granted even though no one has previously developed a device or system on a massive scale. My recommendation is to include an item in your pre-filing checklist for this aspect of your patent application. If in doubt, have a patent professional look over your application before submitting it.