Appeal No. 2003-0540 Page 11
Application No. 09/737,001
written description requirement was designed to guard against. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115 (Fed. Cir. 1991) ("Adequate
description of the invention guards against the inventor's overreaching by insisting that
he recount his invention in such detail that his future claims can be determined to be
encompassed within his original creation.") (quoting Rengo Co. v. Molins Mach. Co.,
657 F.2d 535, 551, 211 USPQ 303, 321(3d Cir. 1981)). See also Purdue Pharma L.P.
v. Faulding Inc., 230 F.3d 1320, 56 USPQ2d 1481, (Fed. Cir. 2000).
The appellant argues that from the specific disclosed ionomer resin examples,
the skilled artisan would have been able to establish the claimed Shore D hardness
limitations. In our view, the original specification does not clearly disclose to the skilled
artisan that the appellant considered the now claimed Shore D hardness limitations to
be part of his invention. We have reviewed the originally filed disclosure and find no
express disclosure for the above-noted Shore D hardness limitations found in claims 9
and 10. In addition to an express disclosure, the written description requirement can be
satisfied by showing that the disclosed subject matter, when given its "necessary and
only reasonable construction," inherently (i.e., necessarily) satisfies the limitation in
question. See Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1423, 5 USPQ2d
1194, 1198 (Fed. Cir. 1987), cert. denied, 486 U.S. 1008 (1988). In addition, for the
reasons set forth above, there is nothing in the original application to suggest the
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