description of "conical shaped cups" insufficient written descriptive support for claims directed
generically to "cups"); In re Lukac 442 F.2d 967, 969,169 USPQ 795, 797 (CCPA 1971) (single
example of 2.6 does not alone provide written descriptive support for the claimed range from 2.0 to
3.0.) Bilstad's original written description does not describe or convey possession of the invention
of an apparatus of the scope covered by Bilstad's copied claims. An apparatus capable of
manipulating objects in a multitude of directions may or may not be enabled by or may or may not
be obvious from the written description. However, the written description must actually describe
the later-claimed invention, not just enable it or provide enough information to render it obvious.
Tronzo, 156 F.3d at 1158,47 USPQ2d at 1832; Lockwood 107 F.3d at 1572, 41 USPQ2d at 1966;
Martin, 823 F.2d at 505, 3 USPQ2d at 1337; DiLeone, 436 F.2d at 1405, 168 USPQ at 593.
V.
Bilstad has argued in great detail how Bilstad's written description describes a member
manipulating objects in a plurality of directions. A key aspect of Bilstad's argument is that the
various parts of the Bilstad apparatus in combination form "a member" manipulating objects. For
the purpose of this decision only, and without deciding whether this is a correct construction, We
adopt Bilstad's position. Thus, the combination of conveyor belt 22 shown in Figure 2 and clamps
70 and 71 shown in Figures 5A and 5B are considered to be "a member."
Bilstad argues that
A specific embodiment of the invention of Claim 57 is shown in Figures 1,
2, 3A-3D, and 5A-5B of the Bilstad application, and is described in the
portions of that application that discuss these Figures. These different Figures
are inter-related, and together illustrate members manipulating objects in a
plurality of directions.
Paper 28, p. 8. More specifically, Bilstad argues that manipulations in three directions are described
by Bilstad Figures 1, 2, and 3. Paper 28, pp. 8-11. Bilstad supports the argument with the testimony
of Prof Colgate. B. Ex. 2009.
Bilstad seems to approach the written description issue backwards. Bilstad starts with the
language of the copied claims, provides a definition of plurality, and then attempts to show that
subject matter in the specification is allegedly encompassed by that definition. However, the
description requirement inquiry must look to what the specification tells the person of ordinary skill,
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