Appeal 2007-1928
Application 10/163,282
PRINCIPLES OF LAW
Our reviewing court stated in Phillips v. AWH Corp., 415 F.3d 1303,
1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005), cert. denied, sub nom. AWH
Corp. v Phillips, 126 S. Ct. 1332 (2006):
The claims, of course, do not stand alone. Rather, they are part
of “a fully integrated written instrument,” Markman, 52 F.3d at
978, consisting principally of a specification that concludes
with the claims. For that reason, claims “must be read in view
of the specification, of which they are a part.” Id. at 979. As we
stated in Vitronics, the specification “is always highly relevant
to the claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.” 90
F.3d at 1582.
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
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