Appeal No. 2000-0019
Application 08/977,451
An issue arising under the written description requirement of 35 U.S.C. § 112,
first paragraph, is a question of fact. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
The adequate written description requirement, which is distinct from the
enablement and best mode requirements, serves "to ens ure 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." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
adequate written description requirement, the applicant does not have to utilize any
particular form of disclosure to describe the subject matter claimed, but "the description
must clearly allow persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618
(Fed. Cir. 1989) (citation omitted).
Put another way, "the applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession of the
invention." Vas-Cath, 935 F.2d at 1563-64, 19 USPQ2d at 1117. " Precisely how close
the original description must come to comply with the description requirement of
section 112 must be determined on a case-by-case basis." Eiselstein v. Frank , 52
F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935
F.2d at 1561, 19 USPQ2d at 1116).
In reviewing the language of claim 1 we note that the phrase the “microspheres
have not been treated “ finds support in the specification at page 3, lines 2 – 17 and
page 6, lines 7 –8. On page 3, the benefits of the invention are touted as “having the
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