Brower, 433 F.2d at 817, 167 USPQ at 687. Enablement and written description are separate issues.
Curtis, Appeal No. 03-1215, slip op. 18; Alton, 76 F.3d at 1172, 37 USPQ2d at 1581; Vas-Cath, 935
F.2d at 1563, 19 USPQ2d at 1117; Utter, 845 F.2d at 998, 6 USPQ2d at 1714; Wilder, 736 F.2d at
1520, 222 USPQ at 372. While the subject matter of later-added claims may be enabled by the
original disclosure, that subject matter may not have been described by that same disclosure. Vas-
Cath, 935 F.2d at 1561, 19 USPQ2d at 1115; DiLeone, 436 F.2d at 1405, 168 USPQ at 593;
Ahlbrecht, 435 F.2d at 911, 168 USPQ at 296.
To summarize, the problem with Leung’s original specification is that it never told the person
having ordinary skill in the art that the use of a plasma post-treatment alone was the inventive
contribution. Rather, the original specification said that the inventive contribution was the
post-treatment of CVD films with a plasma and high energy ions such as those formed when a biasing
voltage is applied along with the plasma. While Leung’s written description includes two examples
of plasma treatment without biasing, these examples do not achieve the stated and claimed goals of
the invention, to reduce carbon content and resistivity of CVD films while improving stability.
Not every thing which is set forth in an original specification may later be claimed as an
applicant’s invention. For example, subject matter which the applicant expressly tells the reader is
not part of the inventive contribution can not later be claimed as the invention. Thus, subject matter
which is identified as prior art or subject matter present only by means an incorporation by reference
is not part of the inventive contribution and can not be later claimed separate from the inventive
contribution. This case presents another such example. The written description unequivocally
identifies the inventive contribution as the post-treatment of CVD films with a plasma and high energy
ions such as those formed by applying a voltage bias. The post treatment with a plasma and high
energy ions is the only technique described which attains the stated goal of the invention to “modify
the film to reduce its resistivity and improve its stability.” Leung’s involved claims do not require the
step clearly identified as part of the inventive contribution. While Leung’s claims may be generic to
the identified inventive contribution, the description of subgeneric subject matter does not necessarily
provide written descriptive support for subject matter generic thereto.
A fair reading of the written description of the 143 Specification would not lead one having
ordinary skill in the art to appreciate that a hydrogen plasma treatment without voltage biasing the film
would reduce the resistivity and carbon content of CVD films. The written description of the 143
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