Appeal No. 2001-2200
Application No. 09/286,328
We refer to our findings, supra, with respect to the teachings of the ‘917 patent
disclosure. Based on our review of the ‘917 patent, we conclude that the disclosure
does not show that appellants were in possession of the invention now claimed. The
disclosure lacks written description for claims which fail to require copper film in contact
with aluminum alloy film.
Whether one skilled in the art would find the instantly claimed invention obvious
in view of the disclosure is not an issue in the "written description" inquiry. Barker, 559
F.2d at 593, 194 USPQ at 474. Thus, whether an artisan might realize that it is
possible to forego the features taught as essential to the invention is irrelevant with
respect to the present inquiry.
Appellants cannot now obtain claims of the scope presented. See Gentry
Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir.
1998) ("Here, as indicated above, it is clear that [the inventor] considered the location of
the recliner controls on the console to be an essential element of his invention.
Accordingly, his original disclosure serves to limit the permissible breadth of his
later-drafted claims."); In re Simon, 302 F.2d 737, 737-41, 133 USPQ 524, 525-27
(CCPA 1962) (claims presented in reissue application which lacked ingredients in
patented claims were not described in appellants’ specification).
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