The CCPA, however, warned against the generalization of its decisions in the area of written
description. Specifically, the CCPA stated:
Moreover, it should be readily apparent from recent decisions of this court involving the
question of compliance with the description requirement of § 112
that each case must be decided on its own facts. Thus, the precedential value of cases
in this area is extremely limited.
Id. Accordingly, the decision in Driscoll reaffirms the factual nature of the written description
requirement and that its assessment must be conducted on a case-by-case basis.
Unlike the facts of Fujikawa, Driscoll’s genus encompassed fourteen distinct classes of
compounds from which one skilled in the art could readily discern the claimed subgenus. Specifically,
the court in Driscoll was presented a generalized formula where one specific moiety, R, constituted the
essence of the inventive subject matter.
iii. In re Smith9
Smith involved an ex parte appeal from the Board in which claims 1, 2, 12-18, 20 and 21 were
held unpatentable. Smith’s claims were presented in a continuation-in-part application filed in 1965
which claimed priority to an application filed in 1947. In reviewing Smith’s claims, however, the Board
determined that Smith’s claimed subgenus lacked adequate written description in the parent 1947
application. Accordingly, the Board did not accord Smith the benefit of the 1947 filing date under 35
U.S.C. § 120 and upheld the examiner’s rejection under 35 U.S.C. § 103 which relied upon a 1948
U.S. patent.
9458 F.2d 1389, 173 USPQ 679 (1972).
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