art that the inventor had possession of the claimed subject matter at the time of the earlier filing
date.” Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); Ralston
Purina Co. v. Far-Mar-Co., Inc, 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985); In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The specification must
provide information that clearly allows persons having ordinary skill in the art to recognize that the
applicant invented what is claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1116 (Fed. Cir. 1991); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989). In Vas-Cath the court noted that the disclosure must “convey with reasonable clarity to those
skilled in the art that. . . [the inventor] was in possession of the invention.” Vas-Cath, 935 F.2d at
1563-64, 19 USPQ2d at 1117 (emphasis original). The court went on to state that the “invention is,
for the purpose of the <written description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d
at 1564, 19 USPQ2d at 1117 (emphasis original).
The written description does not have to “expressly” describe the invention. The later
claimed subject matter may be inherently contained in the original written description. Schering
Corp. v. Amgen Inc., 222 F.3d 1347, 1352, 55 USPQ2d 1650, 1653 (Fed. Cir. 2000). In order for
added subject matter to be inherent, it must be shown that the added subject matter must necessarily
be present in the original application’s specification such that one skilled in the art would recognize
such a disclosure. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed. Cir.
1998). However, disclosure in a specification that merely renders the later-claimed invention obvious
is not sufficient to meet the written description requirement, the disclosure must describe the claimed
invention with all its limitations. Tronzo, 156 F.3d at 1158, 47 USPQ2d at 1832; Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). An applicant
complies with the written description requirement “by describing the invention, with all its claimed
limitations.” Gentry Gallery v. Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed.
Cir. 1998) quoting Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966 (emphasis original). However,
the permissible scope of the claims, i.e, the right to exclude, may be limited by a narrow disclosure.
Gentry, 134 F.3d at 1479, 45 USPQ2d at 1503. Thus, an applicant may run afoul of the written
description requirement if the entirety of the original specification clearly indicates that the invention
is of narrower scope than the subsequently added claims. Cooper Cameron Corp. v. Kvaerner
Oilfield Prods., Inc., 291 F.3d 1317, 1323, 62 USPQ2d 1846, 1851(Fed. Cir. 2002). For example,
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