Interference No. 104,649
Page No. 33
the sensing surface is "reflected through total internal reflection" to create an image of a
fingerprint. (Paper No. 25, p. 5).
While the specifics of the cases concerning adequate written description vary, the cases
agree that the inquiry isfactual and must be assessed on a case-by-case basis. Moreover,
because of the fact-sensitive nature of the written description inquiry, the Federal Circuit has
advised against misapplication of precedent in this area. See, Union Oil Co. of California v.
Atlantic Richfield Co., 208 F.3d 989, 1000, 54 USPQ2d 1227, 1235 (Fed. Cir. 2000); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991); and In re
Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438 (CCPA 1977).
The purpose of the written description requirement is 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 the inventor. Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116.
The inventor can demonstrate possession by such descriptive means as words, structures, figures,
diagrams, formulas, etc., that fully set forth the claimed invention. The inventor, however, needs
to show that the inventor was "in possession" of the invention by describing the invention, with
all its claimed limitations, not that which makes it obvious. 'Thus, entitlement to a filing date
does not extend to subject matter which is not disclosed, but would have been obvious over what
is expressly disclosed. It extends only to that which is disclosed. A description which renders
obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d, 1961, 1966 (Fed. Cir. 1997).
In reviewing Kcagy's written description we are reminded that compliance with
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