Regardless of which factor is involved, it is important to keep in mind that subject matter that
would have been obvious to one of ordinary skill in the art from the specification, or subject matter
that one having ordinary skill in the art could ascertain without undue experimentation is not
necessarily described. The Federal Circuit has recently stated:
Thus, an applicant complies with the written description requirement
“by describing the invention, with all its claimed limitations, not that
which makes it obvious,” and by using “such descriptive means as
words, structures, figures, diagrams, formulas, etc., that set forth the
claimed invention.”
Regents of the Univ. of Cal. v Eli Lilly & Co., 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed.
Cir. 1997) quoting Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966. As further noted by the
Federal Circuit in Lockwood, 107 F.3d at 1571-72, 41 USPQ2d at 1966:
Entitlement to a filing date does not extend to subject matter which
is not disclosed, but would be obvious over what is expressly
disclosed. It extends only to that which is disclosed. While the
meaning of terms, phrases, or diagrams in a disclosure is to be
explained or interpreted from the vantage point of one skilled in the
art, all the limitations must appear in the specification. The question
is not whether a claimed invention is an obvious variant of that which
is disclosed in the specification. Rather, a prior application itself 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 as of the filing date sought.
See also, In re Blaser, 556 F.2d 534, 538, 194 USPQ 122, 125 (CCPA 1977) (“However, the flaw
in this argument is that enablement and obviousness are not the issues; description of the invention
is.”); In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975) (“That a person skilled
in the art might realize from reading the disclosure that such a step is possible is not a sufficient
indication to that person that the step is part of appellants' invention”); Ruschig, 379 F.2d at 995, 154
USPQ at 123 (“While we have no doubt a person so motivated would be enabled by the specification
to make it, this is beside the point for the question is not whether he would be so enabled but whether
the specification discloses the compound to him, specifically, as something appellants actually
invented.”).
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