Finally, although not dispositive, because one can add claims to a pending
application directed to adequately described subject matter, Sproule [the
Gentry inventor] admitted at trial that he did not consider placing the controls
outside the console until he became aware that some of Gentry’s competitors
were so locating the recliner controls. Accordingly, when viewed in its entirety,
the disclosure is limited to sofas in which the recliner control is located on the
console.
The decision in Gentry states that an applicant may add claims to a pending application
so long as the subject matter of the added claims is adequately described. We note that while the
testimony of the Gentry inventor indicating that he had not originally considered including the
added feature was considered by the Court, the testimony alone was not found “dispositive”. At
any rate, Glaxo has not directed us to testimony from a Cabilly inventor that would indicate that
the inventor did not originally intend to include the subject matter of the ‘611 claims or Count 2
in the Cabilly applications.
Glaxo argues that none of the working examples presented in the Cabilly applications are
directed to the subject matter of the ‘611 claims or Count 2 (Paper 51 at 19). However, Glaxo
has not directed us to adequate authority to support the proposition that an application must
contain a working example to comply with the written description requirement of 35 USC § 112,
¶ 1.21
3. Therapeutic treatment
Glaxo argues that the Cabilly applications do not describe a method of treating a human
suffering from a disease. In particular, Glaxo argues that the portion of the Cabilly applications
that discusses therapeutic treatment is referring to the prior art (Paper 49 at 12-14).
21 The lack of a working example is a factor to be considered in determining
compliance with the enablement requirement of 35 USC § 112, ¶ 1, In re Wands, 858 F.2d 731,
737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988),
-42-
Page: Previous 35 36 37 38 39 40 41 42 43 44 45 46 47 48 49 Next
Last modified: November 3, 2007