For greater clarity on this point, consider the case where the specification
discusses only compound A and contains no broadening language of any
kind. This might very well enable one skilled in the art to make and use
compounds B and C; yet the class consisting of A, B and C has not been
described.
In re Di Leone, 436 F.2d 1404,1405 n.1, 168 USPQ 592,593 n.1 (CCPA 1971). See also Martin
v. Maye 823 F.2d 500,505, 3 USPQ2d 1333, 1337 (Fed. Cir. 1987) quoting Jepson v. Colem ,
314 F.2d 533, 536, 136 USPQ 647, 649-50 (CCPA 1963) ("It is not a question of whether one
skilled in the art might be able to construct the patentee's device from the teachings of the disclosure
[but] whether the application necessarily discloses that particular device.").
Similarly just because a limitation would have been obvious from the disclosure does not
mean it was described. A disclosure that merely renders the later-claimed invention obvious is not
sufficient to meet the written description requirement; the disclosure must describe the claimed
invention with all its limitations. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158, 47 USPQ2d 1829,
1832 (Fed. Cir. 1998); Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
Wakalopulos specifically argues:
Bilstad's application claims 57-65, as well as the count, call for a
sterilization apparatus comprising a "moveable member manipulating objects
in a plurality of directions within the reactive volume wherein the
manipulated objects are sterilized." Such a moveable member, capable of
manipulating objects in a plurality of directions within the reactive volume,
is not described or disclosed in the Bilstad application.
Paper 2 1, pp. 5-6, emphasis original. The challenged claim language is somewhat different in each
of Bilstad's involved independent Claims 57, 62 and 65. Bilstad Claim 57 requires:
a moveable member [capable ofl manipulating objects in a plurality of
directions within the reactive volume wherein the manipulated objects are
sterilized.
Bilstad Application 09/294,964, Paper 15, p. 10. Claim 62 requires:
at least one moveable member [capable ofl manipulating objects in a plurality
of directions in the reactive volume wherein manipulated objects are
sterilized.
Bilstad Application 09/294,964, Paper 15, p. 12. Lastly Claim 65 states:
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