Appeal No. 2004-0131
Application No. 08/462,531
position that expert testimony is not entitled to any weight.
This is incorrect. First, the legal issue of obviousness is at
issue in In re Lindell, not the written description requirement.
Secondly, the court stated in this case that while “some weight
ought to be given to a persuasively supported statement of one
skilled in the art on what was not obvious to him, the court
determined that legitimate inferences from the art of record are
too strong to be affected by weight to which instant affidavit is
entitled. Id. at USPQ 521, 524. Hence, the court did not
determine that expert testimony is not entitled to any weight;
rather, the court weighed the affidavit evidence against the art
of record, and determined that the art of record outweighed the
affidavit evidence.
We note that in demonstrating whether the written
description requirement is satisfied, an applicant is not limited
to the specification. For example, in Martin v. Mayer, 823 F.2d
500, 503, 3 USPQ2d 1333, 1336 (Fed. Cir. 1987), the Federal
Circuit considered expert testimony in determining whether the
written description requirement was satisfied. The Court
stated, “there is no rigorous rule excluding expert testimony in
an interference.” Martin v. Mayer, 823 F.2d at 504, 3 USPQ2d at
1336. We therefore do weigh the evidence set forth in the
Stewart Declaration, in the manner discussed, supra.
In summary, the specification, as discussed above,
adequately provides written description support for the invention
as now claimed. We emphasize that, as stated, supra, the Federal
Circuit has held that adequate written description support for an
applicant’s claim limitation exists even though it was not set
forth “in haec verba” in the specification. In re Wright, 866
F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989). There is no
requirement under Section 112 that the subject matter of a claim
be described literally in the disclosure. In re Lukach, 442 F.2d
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