Appeal No. 1997-3487 Page 4
Application No. 08/473,420
out by appellant (Brief, page 4), but the originally claimed range, less than about 10 ppm, fully
encompasses the now claimed range of less than about 1 ppm. The now claimed range is not broader,
but is narrower than that originally claimed. The claims as filed are part of the original disclosure and
may provide or contribute to compliance with the written description requirement of Section 112.
Hyatt v. Boone, 146 F.3d 1348, 1352,
47 USPQ2d 1128, 1130 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1032 (1999); In re Anderson,
471 F.2d 1237, 176 USPQ 331, 332 (CCPA 1973). Original claim 7, makes clear that appellant did
not regard the invention as limited to a composition strictly having a total impurity content of 1 ppm or
less, but that higher levels up to about 10 ppm were contemplated.
The function of the written description requirement is to ensure that the inventor had possession,
as of the filing date of the application relied on, of the specific subject matter later claimed. In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). It is not necessary for the original
disclosure to describe the claim limitations exactly. The description need only be clear enough that
those of ordinary skill in the art will recognize from the disclosure that applicant invented subject matter
including those limitations. Id. When the issue is a difference in ranges, mere comparison of the ranges
is not enough. One must determine whether the original disclosure conveys to those skilled in the art
that the applicant invented the subject matter of the later filed claims. Wertheim, 541 F.2d at 263, 191
per million (ppm) gives a result of 10 ppm.
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