Interference No. 103,675
facts. As the court cautioned in In re Edwards, 568 F.2d at 1354, 196
USPQ at 469:
suffice it to say that each case must be decided on its own
facts, see, e.g., In re Driscoll, supra, and that
precedential value of prior cases is, therefore, extremely
limited.
In all the cases cited by Chen et al., the error from the original
disclosure which was subsequently corrected was an error which was
found to have been obvious to a person of ordinary skill in the art at
the time the application in question was filed. Alternatively, in the
cases cited, there was evidence proffered in said cases during the
prosecution and the weight of that evidence established the error in
the involved application would have been readily apparent to a person
of ordinary skill in the art.
The decisions from our reviewing courts on this issue make
clear that satisfaction of the written description requirement of the
first paragraph of 35 U.S.C. § 112 and questions of inherency are
factual inquiries, decided on a case-by-case basis. Here, therefore,
the inquiry is, with respect to the first filed application for which
Chen et al. seek benefit, do the facts establish that there existed in
said earlier filed application an embodiment within any of the counts
38
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