Interference No. 105,028
Bacchi’s Motion 3 is granted because Holbrooks has no written description under
35 U.S.C. § 112, first paragraph, of a pad portion for supporting the peripheral edge of a
specimen or a wafer. It is apparent that Bacchi has established that Holbrooks’ specification
does not set forth the language of the claims in identical or substantially identical words. Bacchi
has also shown that the drawings do not illustrate structure that specifically meets the language
of the claims. However, this alone is not fatal to Holbrooks because the written description
requirement of 35 U.S.C. § 112 asks no more than whether the disclosure as originally filed
would reasonably convey to an ordinary artisan that the inventor was in possession of the
claimed subject matter. Ralston Purina Co. v. Far-Mar Co., Inc., 772 F.2d 1570, 1575,
227 USPQ 177, 179 (Fed Cir. 1985). Nevertheless, we find that Holbrooks’ disclosure does not
satisfy this requirement.
The junior party’s position that the profile of its finger 105 or 205 and the post 103 and
203, with a wafer being held, would look as shown in Attachment B to its opposition has not
been shown to have any basis in fact in its original disclosure. Holbrooks has not shown how its
disclosure describes or illustrates a finger or post with 1) an upper portion narrower than the
lower portion or 2) a wedge-shaped space of sufficient size to permit a wafer to be supported on
the lower surface (rest pad) of the groove defining the wedge-shaped space. Holbrooks has not
directed our attention to any part of its disclosure that would reasonably convey to an ordinary
artisan that it was in possession of the subject matter illustrated in its Attachment B.
We agree with Bacchi that Holbrooks’ surface 42 does not inherently support a wafer. A
reasonably depicted side view of a finger or post as disclosed by Holbrooks in Figure 2b is
illustrated at page 8, and again at page 11, of Bacchi’s Motion 3. As shown in Holbrooks’
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