Appeal No. 95-4404
Application 07/913,121
While it is well settled that claimed subject matter need not be supported by an
explicit, word for word recitation, something more than a suggestion is needed to satisfy
the requirement for an adequate written description. As set forth in Lockwood v. American
Airlines Inc., 107 F.3d 1565, 1571-1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997):
It is the disclosures of the applications that count. 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. . . [A]ll that is necessary to satisfy the description requirement
is to show that one is “in possession” of the invention . . . One shows
that one is “in possession” of the invention by describing the invention,
with all its claimed limitations, not that which makes it obvious. . .
Although the exact terms need not be used in haec verba, . . . the
specification must contain an equivalent description of the claimed
subject matter. (Citations omitted).
. . .
It is not sufficient for purposes of the written description requirement
of Section 112 that the disclosure, when combined with knowledge in
the art, would lead one to speculate as to modifications that the
inventor might have envisioned, but failed to disclose. Each
application in the chain must describe the claimed features.
The parent application makes only a passing reference to reverse transcriptase
detection and anti-viral drug screening in the “BACKGROUND OF THE INVENTION.”
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