Appeal No. 2004-1452
Application No. 29/138,830
D. The Opinion
As stated by our reviewing court in In re Daniels, 144 F.3d
1452, 1456, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998):
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). We determine that the Wagner
Declaration contains statements of fact directly addressing the
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