Appeal No. 2003-0540 Page 10
Application No. 09/737,001
directing the skilled artisan to that tree must be in the originally filed disclosure. See id.
at 994-95, 154 USPQ at 122; Fujikawa v. Wattanasin, 93 F.3d 1559, 1570-71, 39
USPQ2d 1895, 1905 (Fed. Cir. 1996); Martin v. Mayer, 823 F.2d 500, 505, 3 USPQ2d
1333, 1337 (Fed. Cir. 1987) ("It is 'not a question of whether one skilled in the art might
be able to construct the patentee's device from the teachings of the disclosure. ...
Rather, it is a question whether the application necessarily discloses that particular
device.'") (quoting Jepson v. Coleman, 314 F.2d 533, 536, 136 USPQ 647, 649-50
(CCPA 1963)). Under that standard, we conclude that nothing in the appellant's
application necessarily describes the now claimed subject matter. See also In re
Daniels, 144 F.3d 1452, 1456, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).
There is nothing in the written description of this application that would suggest
to one skilled in the art that the claimed Shore D hardness ranges and the claimed
difference in hardness was important. There is nothing in the written disclosure as
originally filed directing the skilled artisan to the claimed Shore D hardness ranges and
the claimed difference. What the appellant has done is to pick a hardness range
supported in part by specific examples characteristic possessed by two of their
formulations, a characteristic that is not discussed even in passing in the disclosure,
and then make it the basis of claims that cover not just the specific examples, but any
formulation that has that characteristic. This is exactly the type of overreaching the
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