Appeal No. 2002-0652
Application No. 08/465,072
In order to satisfy the written description
requirement, the disclosure as originally filed does
not have to provide in haec verba support for the
claimed subject matter at issue. See Fujikawa v.
Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d 1895, 1904
(Fed. Cir. 1996). Nonetheless, the disclosure "must
... convey with reasonable clarity to those skilled in
the art that ... [the inventor] was in possession of
the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
Put another way, one 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). That inquiry is a factual
one and must be assessed on a case-by-case basis. See
Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116
("Precisely how close the original description must
come to comply with the description requirement of
§ 112 must be determined on a case-by-case basis.").
Because the sufficiency of the written description is evaluated
by one of ordinary skill in the art, details that would be known
by the skilled artisan need not be included in a patent
specification. See Hyatt v. Boone, 146 F.3d 1348, 1353, 47 USPQ2d
1128, 1131 (Fed. Cir. 1998). However, when an explicit limitation
in a claim is not present in the written description, the burden
is on the applicant to show that a person of ordinary skill in the
art would have understood that the description necessarily
includes that limitation. Cf. id. at 1354-55, 47 USPQ2d at 1132
("Thus, the written description must include all of the
limitations of the interference count, or the applicant must show
that any absent text is necessarily comprehended in the
description provided and would have been so understood at the
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