date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571-72, 41
USPQ2d 1961, 1966 (Fed. Cir. 1997).
The disclosure as originally filed does not have to provide ipsis verbis support for the claimed
subject matter at issue. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323,
56 USPQ2d 1481, 1483 (Fed. Cir. 2000); Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39
USPQ2d 1895, 1904 (Fed. Cir. 1996). Rather, if the written description does not use precisely the
same terms used in a claim, the question then is whether the specification directs or guides one skilled in
the art to the subject matter claimed such that the specification reasonably conveys to those skilled in
the art that the inventor invented what is claimed. See, e.g., Fujikawa v. Wattanasin, 93 F.3d at
1570, 39 USPQ2d at 1904 (Fed. Cir. 1996); Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563, 19
USPQ2d at 1116; In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989).
As a backdrop to our factual inquiry into Shiokawa’s written description, we provide an
overview of several of the cases that have been frequently cited in this interference - Fujikawa v.
Wattanasin and In re Driscoll as well as the decision in In re Smith. These cases involved a later
claimed subgenus that sought support in originally filed disclosures that described a genus or both a
genus and one or more species.
i. Fujikawa v. Wattanasin5
Fujikawa involved an appeal from two interference decisions of the Board of Patent Appeals
and Interferences (“Board”), inter alia, denying Fujikawa’s preliminary motion to add an additional
593 F.3d 1559, 39 USPQ2d 1895 (Fed. Cir. 1996).
20
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: November 3, 2007