Appeal No. 2001-0074
Application 09/039,829
1239, 1245, 57 USPQ2d 1776, 1780 (Fed. Cir. 2001) (“composed of” in this case was
interpreted to be the same as “consisting essentially of”).
In this case, both the Appellant and the Examiner are in agreement that
“including” is open ended, like “comprising.” We concur. “Including” allows the tape
element of the claim to contain additional items which may or may not materially affect
the claimed subject matter. Further, the entire claim is constructed with “comprising” in
the preamble, which overall leaves the claim open to inclusion of nonrecited elements.
Thus, the issue is one of whether the specification supports such an amended claim.
The adequate written description requirement of 35 U.S.C. Section 112 provides
that:
[t]he specification shall contain a written description of the invention, and of the
manner and process of making and using it, in such full, clear, concise, and exact
terms as to enable any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall set forth the
best mode contemplated by the inventor of carrying out his invention.
As noted above, an issue arising under the written description requirement of 35
U.S.C. § 112, first paragraph, is a question of fact. Vas-Cath, 935 F.2d 1563, 19
USPQ2d 1116.
The adequate written description requirement, which is distinct from the
enablement and best mode requirements, serves "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 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
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