Appeal No. 2004-0551 Page 4
Application No. 09/393,256
The written description rejection
We will not sustain the rejection of claims 1 to 10 and 21 under 35 U.S.C. § 112,
first paragraph.
The written description requirement serves "to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him; how the specification accomplishes this is not material." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
written description requirement, the appellant does not have to utilize any particular
form of disclosure to describe the subject matter claimed, but "the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989). Put another way, "the applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession of the
invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). In addition to an express disclosure, the written description
requirement can be satisfied by showing that the disclosed subject matter, when given
its "necessary and only reasonable construction," inherently (i.e., necessarily) satisfies
the limitation in question. See Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419,
1423, 5 USPQ2d 1194, 1198 (Fed. Cir. 1987), cert. denied, 486 U.S. 1008 (1988).
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