Ex Parte SATO et al - Page 10




          Appeal No. 2000-0182                                       Page 10           
          Application No. 08/831,327                                                   


          original disclosure, one skilled in the art would understand 2 the           
          term "spiral" as used in the original disclosure to mean "a                  
          three-dimensional curve that turns around an axis at a constant              
          or continuously varying distance while moving parallel to the                
          axis; a helix."3  Thus, it is our view that there is no inherent             
          disclosure in the application to suggest the above-noted                     
          limitations from claim 1.  In that regard, we note that a                    
          disclosure that merely renders the later-claimed invention                   
          obvious is not sufficient to meet the written description                    
          requirement; the disclosure must describe the claimed invention              
          with all its limitations.  See Tronzo v. Biomet Inc., 156 F.3d               
          1154, 1158-60, 47 USPQ2d 1829, 1832-34 (Fed. Cir. 1998); Lockwood            
          v. American Airlines, Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d                
          1961, 1966 (Fed. Cir. 1997); Vas-Cath Inc., 935 F.2d at 1563-64,             
          19 USPQ2d at 1117; In re Winkhaus, 527 F.2d 637, 640, 188 USPQ               
          129, 131 (CCPA 1975); In re DiLeone, 436 F.2d 1404, 1405, 168                

               2 In proceedings before it, the United States Patent and                
          Trademark Office (USPTO) applies to the verbiage of the claims               
          before it the broadest reasonable meaning of the words in their              
          ordinary usage as they would be understood by one of ordinary                
          skill in the art, taking into account whatever enlightenment by              
          way of definitions or otherwise that may be afforded by the                  
          written description contained in the appellant's specification.              
          In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.                
          Cir. 1997).  See also In re Sneed, 710 F.2d 1544, 1548, 218 USPQ             
          385, 388 (Fed. Cir. 1983).                                                   
               3 The American Heritage® Dictionary of the English Language,            
          Third Edition copyright © 1992 by Houghton Mifflin Company.                  







Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next 

Last modified: November 3, 2007