Appeal 2006-1400
Application 10/649,128
obvious when it does no more than yield predictable results.” Id. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the
same reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.
Whether a specification complies with the written description requirement of
35 U.S.C.§ 112, first paragraph, is a question of fact. Regents of Univ. of Cal. v.
Eli Lilly and Co., 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997),
cert. denied, 523 U.S. 1089 (1998) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991)). To fulfill the written
description requirement, a patent specification must describe an invention and do
so in sufficient detail that one skilled in the art can clearly conclude that “the
inventor invented the claimed invention.” Id. (citing Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997) and In re
Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he
description must clearly allow persons of ordinary skill in the art to recognize that
[the inventor] invented what is claimed.”)). Thus, an applicant complies with the
written description requirement “by describing the invention, with all its claimed
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013