Appeal No. 2004-1305 Application No. 29/138,829 The test for sufficiency of the written description is the same, whether for a design or a utility patent. This test has been expressed in various ways; for example, “whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’” [Citations omitted]. ... In general, precedent establishes that although the applicant “does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [the applicant] invented what is claimed.” [Citation omitted]. It is the drawings of the design patent that provide the description of the invention. [Citation omitted]. The issue of whether a patent specification adequately describes the subject matter claimed is a question of fact. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). The Wagner Declaration, even couched in terms of the declarant’s “opinion,” clearly is offering factual evidence in an attempt to explain why one of ordinary skill in this art would have understood the original drawings to support the amended drawings. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). The Wagner Declaration contains statements of fact directly addressing the issue of whether the original drawings provide support for the amended drawings (e.g., see ¶9 in the Wagner Declaration). 4Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007