Appeal No. 2003-1038
Application No. 09/262,628
U.S.C. § 112, first paragraph,6 the disclosure of the application
as originally filed must nevertheless reasonably convey to those
skilled in the relevant art that the applicant, as of the filing
date of the original application, had possession of the claimed
invention. In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578,
1581 (Fed. Cir. 1996); In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983).
Here, the specification is devoid of any discussion on the
subgenus of “fluoroplastics” or on the “fluoroplastic” nature of
the fluoropolymers described in the specification. The
appellants admit as much. (Appeal brief, page 9.) Instead, the
specification merely recites a potentially infinite genus in
“fluoropolymers” with a listing of seven types of polymers (page
2, lines 4-11), two of which happen to be described as
fluoroplastics in Grootaert ’002 (column 1, lines 35-39). In
our view, the disclosure of a potentially infinite genus
(“fluoropolymer”) and two polymers within the now claimed
subgenus of polymers having a particular characteristic, i.e.
“fluoroplastic,” is insufficient to satisfy the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967,
6 See, e.g., Union Oil Co. of Cal. v. Atlantic Richfield
Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232, 1233 (Fed. Cir.
2000).
6
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