(The written description requirement does not require in haec verba antecedence in the originally filed
application). However, where different language is relied upon for support, “the specification must
contain an equivalent description of the claimed subject matter.” Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); Wagoner v. Barger, 463 F.2d
1377, 1380, 175 USPQ 85, 86 (CCPA 1972).
Last, if neither explicit language nor equivalent language is present, then it must be determined
if the newly claimed feature is inherently present in the specification. Therma-Tru Corp. v. Peachtree
Doors Inc., 44 F.3d 988, 993, 33 USPQ2d 1274, 1276 (Fed. Cir. 1995) (“[T]he later explicit
description of an inherent property does not deprive the product of the benefit of the filing date of
the earlier application.”). Proof of inherency requires evidence that the “necessary and only
reasonable construction to be given the disclosure by one skilled in the art is one which will lend clear
support to . . . [this] positive limitation. . . .” Kennecott Corp. v. Kyocera International Inc., 835
F.2d 1419, 1423, 5 USPQ2d 1194, 1198 (Fed. Cir. 1987) quoting Langer v. Kaufman , 465 F.2d
915, 918, 175 USPQ 172, 174 (CCPA 1972) quoting Binstead v. Littmann , 242 F.2d 766, 770, 113
USPQ 279, 282 (CCPA 1957). In Kennecott, 835 F.2d at 1423, 5 USPQ2d at 1198, the court noted:
The court has generally applied this standard of the "necessary and
only reasonable construction" as a basis for determining whether an
application could, on the basis of an inherent property, support a
limitation in an interference count. [Citations omitted.]
As noted by the CCPA:
Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient. [Citations omitted.] If, however,
the disclosure is sufficient to show that the natural result flowing from
the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient.
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981), quoting, Hansgirg v. Kemmer,
102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939). Thus, it is not sufficient that a person
following the disclosure might obtain the result set forth; it must inevitably happen. (Our emphasis).
Dreyfus v. Sternau, 357 F.2d 411, 415, 149 USPQ 63, 66 (CCPA 1966); Crome v. Morrogh, 239
F.2d 390, 392, 112 USPQ 49, 50 (CCPA 1956).
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