Appeal No. 1997-1808 Page 4
Application No. 08/172,101
The purpose of the written description requirement is to guard against the inventor’s
overreaching by insisting that the invention be recounted in such detail that the inventor’s future claims
can be determined to encompass subject matter within his or her original creation. See Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991). While the Applicant
need not describe exactly the subject matter claimed, the description must clearly allow persons of
ordinary skill in the art to recognize that he or she invented what is claimed. 935 F.2d at 1562, 19
USPQ2d at 1116.
A description of the invention which is narrower than the subject matter encompassed by the
claims will not always result in a failure to fulfill the written description requirement of
35 U.S.C. § 112, first paragraph. See In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973). However, “the case law does ‘not compel the conclusion that a description of a
species always constitutes a description of a genus of which it is a part’” either. Gentry Gallery, Inc.
v. Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)(quoting Regents
of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405 (Fed. Cir.
1997)). “It is a truism that a claim need not be limited to a preferred embodiment. However, in a given
case, the scope of the right to exclude may be limited by a narrow disclosure.” Id. Each case turns on
its own facts. In re Smythe, supra. A review of the Specification as a whole is required to reveal
whether the Specification reasonably conveys that Appellants invented a process as broad as now
claimed.
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