Appeal No. 1997-0008
Application 08/347,190
skilled in the art.”); Alton, 76 F.3d at 1175, 37 USPQ2d at 1583-84 (testimony in declaration offering
factual evidence to expand the breadth of specification by showing the interpretation that one of
ordinary skill in the art would have made of the disclosure therein is admissible with respect to whether
that person would have understood from the disclosure that the claimed subject matter was in
applicant’s possession at the time of filing); cf. In re Howarth, 654 F.2d 103,105, 210 USPQ 689,
691-93 (CCPA 1981) (While “[a]n inventor need not . . . explain every detail” of the claimed invention
to comply with 35 U.S.C. § 112, first paragraph, enablement requirement, because “conventional
knowledge will be read into the disclosure,” “the burden rests upon him to establish that those of
ordinary skill in the art can be expected to possess or know where to obtain this knowledge.”). While
the subject matter does not have to be described in the disclosure exactly as claimed, “the description
must clearly allow persons of ordinary skill in the art to recognize that [appellant] invented what is
claimed [citations omitted].” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.
Cir. 1989); see also Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1584 (“If a person of ordinary
skill in the art would have been in possession of the claimed invention at the tine of filing, even if every
nuance of the claims is not explicitly described in the specification, then the adequate written description
requirement is met.”). Thus, where the same terms are not used in the specification and the claims, one
skilled in the art must necessarily recognize in the disclosure an equivalent or inherent description of the
claimed invention and not merely a description that would render obvious the claimed invention. See
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed. Cir. 1998) (“In order
for a disclosure to be inherent, . . . the missing descriptive matter must necessarily be present in the . . .
specification such that one skilled in the art would recognize such a disclosure.”); Lockwood, supra (“It
is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when
combined with the knowledge in the art, would lead one to speculate as to modifications that the
inventor might have envisioned, but failed to disclose.”).
The examiner submits that appellant was not in possession of “the broader invention” because
there is no “support” for the limitations of claim 7 in the embodiment set forth on pages 9-10 of the
specification (answer, pages 4-5). The examiner contends, inter alia, that none of the specific
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007