Appeal No. 2003-0936
Application No. 09/532,806
was in possession of the invention.” Vas-Cath, 935 F.2d
at 1563-64, 19 USPQ2d at 1117. That portion of the
opinion in Vas-Cath, however, merely states a purpose
of the written description requirement, viz., to ensure
that the applicant had possession of the invention as
of the desired filing date. It does not state that
possession alone is always sufficient to meet that
requirement. Furthermore, in Lockwood v. American
Airlines, Inc., we rejected Lockwood’s argument that
“all that is necessary to satisfy the description
requirement is to show that one is “in possession”
of the invention. 107 F.3d 1565, 1572, 41 USPQ2d 1961,
1966 (Fed. Cir. 1997). Rather, we clarified that the
written description requirement is satisfied by the
patentee’s disclosure of “such descriptive means as
words, structures, figures, diagrams, formulas, etc.,
that fully set forth the claimed invention.” Id.
Accordingly, we espouse the view expressed in Evans v. Eaton,
20 U.S. (7 Wheat.) 356 (1822), as did the court in Vas-Cath, Inc.
v. Mahurkar, 935 F.2d at 1561, 19 USPQ2d at 1114-15, that:
[T]he Court concluded that the specification of a
patent had two objects, the first of which was “to
enable artizans to make and use [the invention]. . . .”
[Evans v. Eaton,] . . . at 433. The second object of
the specification was
to put the public in possession of what the
party claims as his own invention, so as to
ascertain if he claims anything that is in
common use, or is already known, and to guard
against prejudice or injury from the use of
an invention which the party may otherwise
innocently suppose not to be patented. It
is, therefore, for the purpose of warning an
innocent purchaser, or other person using . . .
[the invention], of his infringement of the
patent; and at the same time, of taking from
the inventor the means of practicing upon the
credulity or the fears of other persons, by
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