Appeal No. 2000-2076 Page 4
Application No. 08/481,131
claimed subject matter at issue. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320,
1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000). Nor does the original disclosure have
to contain a working example or embodiment illustrating the limitation at issue. Rather,
the test is whether applicants’ specification, as filed, reasonably conveys to the artisan
that the inventors had possession at that time of the later claimed subject matter. Vas-
Cath Inc. v Mahurkar, 935 F.2d 1555, 1563, 19 USQP2d 1111, 1116 (Fed. Cir. 1991).
Any person skilled in the art, reading the original disclosure, must “immediately discern
the limitation at issue” in the claims. Waldemar Link GMBH & Co. v. Osteonics Corp.,
32 F.3d 556, 558, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994). The inquiry is factual, and
must be assessed on case-by-case basis. See Vas-Cath Inc. v. Mahurkar, 935 f.2d at
1561, 19 USPQ2d at 1116.
We have carefully reviewed the declaration evidence in this case, including the
Balinov Declaration executed July 3, 1998.3 According to Dr. Balinov, applicants’
original disclosure describes spherical particles comprising a polymeric matrix enclosing
a contrast agent, e.g., an ultrasound contrast agent. In this regard, Dr. Balinov points to
original claim 4 describing a “contrast agent [which] reflects sound waves.”
The question is would any person skilled in the art have understood what would
be an appropriate material for the ultrasound contrast agent described in the original
disclosure? Dr. Balinov answers that question in the affirmative, stating that:
3 The examiner has challenged Dr. Balinov’s qualifications (Examiner’s Answer, Paper No. 30, page 10,
first complete sentence). However, having reviewed the educational background and research
experience set forth at page 1 of the Balinov Declaration, we believe that Dr. Balinov is qualified to
interpret applicants’ specification, and that the Balinov Declaration is entitled to weight in this ex parte
proceeding.
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