non-original claims which fail to include an element clearly stated in the original specification to be
an essential, necessary or critical element of the invention may violate the written description
requirement.
The issue of whether a specification provides a written description for a later claimed
invention is separate from the issue of whether a specification enables a later claimed invention. In
re Curtis, Appeal No. 03-1215, slip op. 18 (Fed. Cir. January 6, 2004); In re Alton, 76 F.3d 1168,
1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996); Vas-Cath, 935 F.2d at 1563, 19 USPQ2d at 1117;
Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988); In re Wilder, 736 F.2d
1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984). Thus, a specification may be enabling as to a later
claimed invention but not provide a written description of that invention. Vas-Cath, 935 F.2d at
1561, 19 USPQ2d at 1115 (“it is possible for a specification to enable the practice of an invention
as broadly as it is claimed, and still not describe that invention” quoting In re DiLeone, 436 F.2d
1404, 1405, 168 USPQ 592, 593 (CCPA 1971) (emphasis added). See also In re Ahlbrecht, 435 F.2d
908, 911, 168 USPQ 293, 296 (CCPA 1971) (although disclosure of parent application may have
enabled production of claimed esters having 2-12 methylene groups, it only described esters having
3-12 methylene groups). The court in Vas Cath reiterated the following example from the DiLeone
opinion:
As an example, the court posited the situation “where the specification
discusses only compound A and contains no broadening language of any kind.
This might very well enable one skilled in the art to make and use compounds
B and C; yet the class consisting of A, B and C has not been described.”
[DiLeone, 436 F.2d] at 1405 n.1, 168 USPQ 593 n.1
Vas-Cath, 935 F.2d 1561-62, 19 USPQ2d at 115 (italics original, bracketed material added).
B.
We turn to see if the original 143 Specification provides information that would convey to
the person of ordinary skill in the art that Leung invented the subject matter of added Claims 13, 19,
20 and 26. We need only address the content of the 143 Specification since Leung has admitted that
the oringinal 143 Specification is identical to that of the great grandparent application and has
disclaimed reliance on any additional subject matter which may have been incorporated by reference
from the parent and grandparent applcations. Paper 104, p. 15.
-24-
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: November 3, 2007