Ex parte SUNAMI et al. - Page 4




               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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