Appeal 2007-1463 Page 7
Application 10/083,492
1. Fig. 1 of the Specification shows a single plate.
2. The Specification does not disclose the existence of a second plate or the
absence of a second plate in a retaining assembly.
C. Principles of Law
1. “What is claimed by the patent application must be the same as what is
disclosed in the specification; otherwise the patent should not issue.” Festo Corp.
v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736, 62 USPQ2d 1705,
1712 (2002).
2. All that is necessary to satisfy the description requirement is to show that
one is “in possession” of the invention. Lockwood accurately states the test. See
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961,
1966 (Fed. Cir. 1997); and Vas- Cath Inc. v. Mahurkar , 935 F.2d 1555, 1563-64,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
One shows that one is “in possession” of the invention by describing
the invention, with all its claimed limitations, … . Id. (“ [T]he
applicant must also convey to those skilled in the art that, as of the
filing date sought, he or she was in possession of the invention. The
invention is, for purposes of the ‘written description’ inquiry,
whatever is now claimed.”) (emphasis in original). One does that by
such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention. Although the
exact terms need not be used in haec verba, see Eiselstein v. Frank ,
52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (“ [T]he
prior application need not describe the claimed subject matter in
exactly the same terms as used in the claims.. . .”), the specification
must contain an equivalent description of the claimed subject matter.
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