Appeal No. 95-0537
Application No. 08/077,709
clarity to those skilled in the art that, as of the filing
date sought, the applicant was in possession of the invention
now claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Compliance with the
written description requirement is a question of fact. In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996).
We note that there is no literal support in the
specification as originally filed for the phrase "of at least
one micron square." Nevertheless, appellants rely on a
declaration of Michael M. Eddy dated February 22, 1994, to
establish that the claims as amended do not contain new matter
(Brief, p. 16):
A ‘film’ would have been understood by those
skilled in the art at the time of filing the present
application to mean a material having an area larger
than several grain sizes. While grain sizes vary .
. . a region of one micron square would certainly be
a ‘film’ as opposed to a grain.
However, Eddy fails to provide any factual basis to explain
why one having ordinary skill in the art would have understood
the term "film" to mean a material having an area larger than
several grain sizes. Compare Alton, 76 F.3d at 1179, 37
7
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