Appeal No. 1999-1008
Application 08/713,905
the statute. See, generally, Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111,
1114 (Fed. Cir. 1991). It is well settled that
[t]he function of the 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 by him; how the specification accomplishes this is not material.
. . . It is not necessary that the application describe the claim limitations exactly, . . .
but only so clearly that persons of ordinary skill in the art will recognize from the
disclosure that appellants invented processes including those limitations. [Citations
omitted.]
The primary consideration is factual and depends on the nature of the invention and
the amount of knowledge imparted to those skilled in the art by the disclosure. . . .
In re Wertheim, 541 F.2d 257, 262-65, 191 USPQ 90, 96 (CCPA 1976); see also Vas-Cath , 935
F.2d at 1563-64, 19 USPQ2d at 1116-17. Appellants, in framing the specification, are under no
requirement to “utilize any particular form of disclosure to describe the subject matter claimed.”
In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996). Thus, the entire
content of the specification, including the objects of the invention, must be considered in
determining compliance with the written description requirement. See, e.g., In re Wilder, 736
F.2d 1516, 1520, 222 USPQ 369, 372-73 (Fed. Cir. 1984). However presented, the written
description in the specification must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, [appellants were] in possession of the invention . . . now
claimed,” Vas-Cath , 935 F.2d at 1563-64, 19 USPQ2d at 1117, which factual determination is
made on a case-by-case basis. Id., 935 F.2d at 1561, 19 USPQ2d at 1116. In order to make out a
prima facie case that the appealed claims do not comply with this section of the statute, the
examiner must set forth evidence or reasons why, as a matter of fact, persons skilled in this art
would not reasonably recognize in the disclosure in the specification a description of the
invention defined by the claims which establishes that appellants were in possession of the
invention, including all of the limitations thereof, at the time the application was filed. See
generally, Alton, 76 F.3d at 1175-76, 37 USPQ2d at 1583-84, citing Wertheim, 541 F.2d at 263-
64, 191 USPQ at 97.
The claimed invention now encompassed by appealed claim 3 is three isomeric ether
diisocyanate compounds, separately and in admixture, which products must have “a hydrolyzable
chlorine content of less than 0.1%” (emphasis supplied). In other words, in view of this claim
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