Appeal No. 2004-2307
Application No. 09/331,756
ensure that the inventor had possession, as of the filing date of the application relied on,
of the specific subject matter later claimed by him.’”) (quoting In re Edwards, 568 F.2d
1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978)).
The invention claimed does not have to be described in ipsis verbis in order to
satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208
F.3d 989, 1000, 54 USPQ2d 1227, 1235 (Fed. Cir. 2000). However, one skilled in the
art, reading the original disclosure, must be able to immediately discern the limitations
now claimed. See Waldemar Link GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 558,
31 USPQ2d 1855, 1857 (Fed. Cir. 1994) (“The fact finder must determine if one skilled
in the art, reading the original specification, would immediately discern the limitation at
issue in the parent.”).
We are mindful, however, that the question of written description support should
not be confused with the question of what would have been obvious to the artisan.
Whether one skilled in the art would find the instantly claimed invention obvious in view
of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559
F.2d 588, 593, 194 USPQ 470, 474 (CCPA 1977). A description which renders obvious
the invention for which the benefit of an earlier date is sought is not sufficient.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997).
When a claimed limitation is not present in the written description, it must be
shown that a person of ordinary skill would have understood, at the time the application
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