consistent with Junior Party Hayama’s failure to comply with sections 6 and 7 (identification of
counsel and real party in interest) as set forth in the Standing Order (Paper No. 2). Pursuant to
37 CFR § 1.662(a), Junior Party Hayama’s abandonment of the contest is treated as a request for
adverse judgment as to Count 1.
B. Recommendation
It is recommended that the examiner of Kumar et al., U.S. Patent Application 08/460,958
(Kumar ‘958) reject claims 115-117, 120, 122-125, 128-136, 140-145 under 35 U.S.C. § 112,
first paragraph, written description. Specifically, it is not clear to us that the Kumar ‘958
application directs or guides one skilled in the art to the polysiloxanes recited in claims 115-117,
120, 122-125, 128-136, 140-145.
The purpose 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 by the inventor. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991). The inventor can demonstrate possession by such descriptive means as
words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.
The inventor, however, needs to show that the inventor was "in possession" of the invention by
describing the invention, with all its claimed limitations, not that which makes it obvious.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571, 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
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