Many years ago our predecessor court graphically articulated this
standard by analogizing a genus and its constituent species to a forest
and its trees. As the court explained:
It is an old custom in the woods to mark trails by making
blaze marks on the trees. It is no help in finding a trail . . . to
be confronted simply by a large number of unmarked trees.
Appellants are pointing to trees. We are looking for blaze
marks which single out particular trees.
Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996), quoting In
re Ruschig, 379 F.2d 990, 994-95, 154 USPQ 118, 122 (CCPA 1967). "Precisely how close the
original description must come to comply with the description requirement of Section 112 must be
determined on a case-by-case basis." Eiselstein, 52 F.3d at 1039, 34 USPQ2d at 1470, quoting
Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116, quoting In re Smith , 481 F.2d 910, 914, 178
USPQ 620, 623-24 (CCPA 1973).
The determination that newly added subject matter meets § 112's written description generally
involves at least one of three factors. The first involves the situation where claimed language is
literally stated in the specification, i.e., literal antecedence in the specification for the newly added
subject matter. The description requirement is ordinarily met by a specification which describes the
invention in the same words as the claims. In re Bowen, 492 F.2d 859, 864, 181 USPQ 48, 5246
(CCPA 1974). See also, Smith, 481 F.2d 910, 914, 178 USPQ 620, 623 (CCPA 1973); Snitzer v.
Etzel, 465 F.2d 899, 902, 175 USPQ 108, 110-11 (CCPA 1972), appeal after remand, 531 F.2d
1062, 189 USPQ 415 (CCPA 1976); Martin v. Johnson, 454 F.2d 746, 751-52, 172 USPQ 391, 395
(CCPA 1972).
If the new limitation is not literally set forth , then it must next be determined whether the
limitation was actually described although in different language. In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984) ("It is not necessary that the claimed subject matter be
described identically . . . ."); In re Lukach, 442 F.2d 967, 968-69, 169 USPQ 795, 796 (CCPA 1971).
46
We use the word “ordinarily” because under some circumstances identical antecedent language in the
specification may not provide an adequate written description of the subject matter of the invention. Thus, with respect
to claims covering DNA molecules, it has been held that there is not an adequate written description unless the structure
of the DNA is disclosed. Regents of the Uni. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404
(Fed. Cir. 1997).
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