It is well established that original claims, in unamended form are a part of the original
specification as filed. See In re Koller, 613 F.2d 819,823, 204 USPQ 702, 706 (CCPA 1980); in
re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397 (CCPA 1973). To the extent that van
Engelen is relying on the specification of Lee's parent applications to make the argument that the
involved Lee specification does not provide written description support for Lee claims 2 and 8
under 35 U.S.C. § 112, first paragraph, that is improper. See Reiffin v. Microsoft, 214 F.3d
1342, 1346, 54 USPQ2d 1915, 1918 (Fed. Cir. 2000). Accordingly, that portion of van
Engelen's preliminary motions 1-3 seeking judgment against Lee on the basis that Lee's involved
claims 2 and 8 lack written description support under 35 U.S.C. §112, ý I is denied.
Indefiniteness
Van Engelen additionally argues that Lee's claims 2 and 8 are unpatentable under 35
U.S.C. § 112, 12. Van Engelen argues that should the board determine that Lee's claims 2 and 8
are ambiguous, any attempt to resolve the ambiguity only emphasizes the inconsistency between
the claim language and the '763 specification (motions I and 2 at 15, motion 3 at 17).
Van Engelen makes no real attempt to explain or prove that the involved claims 2 and 8
are ambiguous in the first place. Van Engelen seems to invite the panel to make an independent
determination that the claims are ambiguous. We decline the invitation. It is the role of advocate,
not judge, to present a detailed analysis as to why the claims are, on their face, ambiguous. Van
Engelen bases the rest of its discussion on a presumption that the claims are ambiguous, and
discusses why Lee's involved specification fails to resolve the ambiguity. However, even that
analysis is flawed.
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