F.2d 867, 874, 9 USPQ2d 1384, 1390 (Fed. Cir. 1988) ("[N]or is it in any manner improper to
amend or insert claims intended to cover a competitor's product the applicant's attorney has learned
about during the prosecution of a patent application.")
A test for determining whether later claimed subject matter is supported by an earlier written
description is whether the disclosure of the application "reasonably conveys to a person skilled in
the art that the inventor had possession of the claimed subject matter at the time of the earlier filing
date." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); Ralston
Purina Co. v. Far-Mar-Co., Inc, 772 F.2d 1570, 1575, 227 USPQ 177,179 (Fed. Cir. 1985); In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). However, the written
description requirement "is not subsumed by the 'possession' inquiry." New Railhead Manufacturin
LLC v. Vermeer Manufacturing, Co., 298 F.3d 1290, 1296, 63 USPQ2d 1843, 1847 (Fed. Cir.
2002). As noted by the Federal Circuit:
A showing of "possession" is ancillary to the statutory mandate that "[t]he
specification shall contain a written description of the invention," and that
requirement is not met if, despite a showing of possession, the specification
does not adequately describe the claimed invention. After all, as indicated
above, one can show possession of an invention by means of an affidavit or
declaration during prosecution, as one does in an interference or when one
files an affidavit under 37 C.F.R. § 1. 131 to antedate a reference. However,
such a showing of possession alone does not cure the lack of a written
description in the specification, as required by statute.
Enzo Biochem. Inc. v. Gen-Probe Inc., 296 F.3d 1316, 1330, 63 USPQ2d 1609, 1617 (Fed. Cir.
2002).
The specification must provide information that clearly allows persons having ordinary skill
in the art to recognize that the applicant invented the later claimed subject matter. Vas-Cath, 935
F.2d at 1563-64,19 USPQ2d at 1117; In re Gosteli, 872 F.2d 1008,1012, 10 USPQ2d 1614,1618
(Fed. Cir. 1989). The written description requirement is satisfied by the applicant's disclosure of
"such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth
the claimed invention." Lockwood, 107 F.3d at 1572,41 USPQ2d at 1966. The written description
must show that the applicant invented each feature that is included as a claim limitation and the
adequacy of the written description is measured from the face of the application. New Railhead
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