Appeal 2007-1941
Application 10/363,159
1 description requirement, the patent specification must describe an invention
2 in sufficient detail that one skilled in the art can clearly conclude that the
3 inventor invented what is claimed. Lockwood v. Am. Airlines, Inc., 107 F.3d
4 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gosteli, 872
5 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). The disclosure as
6 originally filed does not, however, have to provide a description in the
7 identical words to support subject matter now claimed. Cordis Corp. v.
8 Medtronic AVE, Inc., 339 F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed.
9 Cir. 2003) (“The disclosure as originally filed does not … have to provide in
10 haec verba support for the claimed subject matter at issue.”). If the written
11 description does not use precisely the same terms used in a claim, the
12 written description must direct or guide one skilled in the art to the subject
13 matter claimed. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d
14 1895, 1904 (Fed.Cir. 1996). In other words, there must be blazemarks in the
15 original disclosure directing the skilled artisan to the subject matter now
16 claimed. Fujikawa, 93 F.3d at 1570-71, 39 USPQ2d at 1905; In re Ruschig,
17 379 F.2d 990, 994-95, 154 USPQ 118, 122 (CCPA 1967). The disclosure of
18 a genus does not necessarily implicitly describe every subgenus
19 encompassed by that genus. In re Smith, 458 F.2d 1389, 1395, 173 USPQ
20 679, 683 (CCPA 1972).
21 The Office “bears the initial burden . . . of presenting a prima facie
22 case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
23 1443, 1444 (Fed.Cir. 1992). With respect to the written description, that
24 burden is discharged by “presenting evidence or reasons why persons skilled
25 in the art would not recognize in the disclosure a description of the invention
26 defined by the claims.” In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90,
27 97 (CCPA 1976).
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Last modified: September 9, 2013