Appeal No. 2002-1354
Application 08/668,264
appellants need only establish that the written description of the application “necessarily”
describes the later claimed subject matter such that one skilled in the art would recognize such a
disclosure therein. See generally, Purdue Pharma, 230 F.3d at 1327, 56 USPQ2d at 1486;
Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed. Cir. 1998) (“In order
for a disclosure to be inherent, . . . the missing descriptive matter must necessarily be present in
the . . . specification such that one skilled in the art would recognize such a disclosure. See
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed.
Cir. 1991).”); Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961,
1966 (Fed. Cir. 1997) (“Lockwood claimed a distinct invention from that disclosed in the
specification. It is not sufficient for purposes of the written description requirement of § 112 that
the disclosure, when combined with the knowledge in the art, would lead one to speculate as to
modifications that the inventor might have envisioned, but failed to disclose.”).
In other words, “one skilled in the art, reading the original disclosure, must ‘immediately
discern the limitation at issue’ in the claims.” Purdue Pharma, 230 F.3d at 1323, 56 USPQ2d at
1483, quoting Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558, 31 USPQ2d
1855, 1857 (Fed. Cir. 1994). Whether one skilled in the art would immediately discern in the
written description of the application the limitations of the invention now claimed is a factual
inquiry that is determined on a case-by-case basis. Vas-Cath, supra; see also Purdue Pharma,
230 F.3d at 1323, 56 USPQ2d at 1483. In order to make out a prima facie case that the appealed
claims do not comply with this section of the statute, the examiner must set forth evidence or
reasons why, as a matter of fact, persons skilled in this art would not reasonably recognize in the
disclosure in the specification a description of the invention defined by the claims which
establishes that appellant was in possession of the invention, including all of the limitations
thereof, at the time the application was filed. See generally, In re Alton, 76 F.3d 1168, 1175-76,
37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996), citing Wertheim, 541 F.2d at 263-64, 191 USPQ at
97.
We have reviewed the passages of the specification on which appellants rely in light of
the written description in the specification as a whole, and based on our review, find that we
agree with the appellants that, as a matter of fact, one of ordinary skill in this art would have
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