Appeal 2007-1580
Application 11/017,710
1 Eli Lilly and Co., 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997),
2 cert. denied, 523 U.S. 1089 (1998)(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
3 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991)). To fulfill the written
4 description requirement, a patent specification must describe an invention and do
5 so in sufficient detail that one skilled in the art can clearly conclude that “the
6 inventor invented the claimed invention.” Id. (citing Lockwood v. Am. Airlines,
7 Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997) and In re Gosteli, 872
8 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (“[T]he description
9 must clearly allow persons of ordinary skill in the art to recognize that [the
10 inventor] invented what is claimed.”)). Thus, an applicant complies with the
11 written description requirement “by describing the invention, with all its claimed
12 limitations, not that which makes it obvious,” and by using “such descriptive
13 means as words, structures, figures, diagrams, formulas, etc., that set forth the
14 claimed invention.” Id. (citing Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966).
15 It is important to note that "[t]he invention is, for purposes of the ‘written
16 description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d at 1564, 19
17 USPQ2d at 1117.
18
19 FINDINGS OF FACT
20 The relevant portion of Appellant’s Specification reads as follows:
21 Fluid flow connection means, for example one or more
22 apertures, may be provided in the integrally formed wall means that
23 separates the interior of balloon segment 236 and one or more of the
24 adjacent, external lumens 242, 244 and 246. In this embodiment,
25 instead of having coaxial inner sleeve 234, fluid may be supplied to
26 balloon segment 236 through sleeve 232 and withdrawn through an
27 externally extending adjacent, external lumen such as lumen 242. As
28 seen in Fig. 4, external, adjacent lumen 242 can be formed so as to run
3
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Last modified: September 9, 2013