Appeal No. 2000-0822
Application 09/037,555
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. . . .
. . . .
. . . If lack of literal support alone were enough to support a rejection under § 112,
then the statement of In re Lukach [442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA
1971)] . . . that “the invention claimed does not have to be described in ipsis verbis in
order to satisfy the description requirement of § 112,” is empty verbiage. The burden
of showing that the claimed invention is not described in the specification rests on the
PTO in the first instance, and it is up to the PTO to give reasons why a description not
in ipsis verbis is insufficient. [541 F.2d at 262-65, 191 USPQ at 96-98.]
See also Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed.
Cir. 1991).
Appellants, in framing the specification, are under no requirement to “utilize any
particular form of disclosure to describe the subject matter claimed.” Alton, 76 F.3d at 1172, 37
USPQ2d at 1581, and cases cited therein; see also Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1571-72, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) (the invention can be described “by
such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth
the claimed invention”); In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372-73 (Fed. Cir.
1984) (“The objects of the Invention may, in some cases, provide support for claims sought
through reissue. [Citation omitted.]”). “[T]he meaning of terms, phrases, or diagrams in a
disclosure is to be explained or interpreted from the vantage point of one skilled in the art.”.
Lockwood, supra.
We agree with appellants that there is no mention of “solvent” in the written description
provided in the specification, including the working examples. While the examiner contends that
“water” is a solvent, he has not established that the same in fact acts as a solvent, as this term is
used in the chemical arts, for the monomers and/or the polymers which are extant on the carrier
at the time the water is added in the processes taught in the written description in the
specification. Thus, on this record, we determine as a matter of fact that appellants were in
possession of the invention defined by the negative limitation found in each of appealed claims
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