Appeal No. 2004-2307
Application No. 09/331,756
was filed, that the description requires that limitation. See Hyatt v. Boone, 146 F.3d at
1353, 47 USPQ2d at 1131 (“[W]hen an explicit limitation in an interference count is not
present in the written description whose benefit is sought it must be shown that a
person of ordinary skill would have understood, at the time the patent application was
filed, that the description requires that limitation.”).
One shows “possession” by descriptive means such as words, structures,
figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood,
107 F.3d at 1572, 41 USPQ2d at 1966. It is not sufficient for purposes of the written
description requirement that the disclosure, when combined with the knowledge in the
art, would lead one to speculate as to modifications that the inventor might have
envisioned, but failed to disclose. Id.
Appellant’s disclosure described alphanumeric character and/or image data,
stored as data files on hard disk at the central site, and later transmitted to a remote
station over a modem. The modem/telephone network communications link to the
remote stations was deemed to be the most reliable link for data transfer. (See, e.g.,
spec. at 6.)
Modem communication over a telephone network is not, however, a digital data
communication link, as now claimed. A modem is “[a] device that converts the digital
signals produced by terminals and computers into the analog signals that telephone
circuits are designed to carry.” McGraw-Hill Encyclopedia of Science & Technology, 7th
-8-
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