Appeal No. 2005-0826
Application No. 09/989,563
The “written description” clause of section 112 has been construed
to mandate that the specification satisfy two closely related requirements.
First, it must describe the manner and process of making and using the
invention so as to enable a person of skill in the art to make and use the
full scope of the invention without undue experimentation. Second, it must
describe the invention sufficiently to convey to a person of skill in the art
that the patentee had possession of the claimed invention at the time of
the application, i.e., that the patentee invented what is claimed. Those
two requirements usually rise and fall together. That is, a recitation of how
to make and use the invention across the full breadth of the claim is
ordinarily sufficient to demonstrate that the inventor possesses the full
scope of the invention, and vice versa.
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d
1724, 1731-32 (Fed. Cir. 2005) (citations omitted).
Instant claim 16 depends from independent claim 15. Claim 15 is similar to
instant claim 1. Claim 15, however, recites that the at least one bypass device is
“reversibly activated to reversibly bypass the at least one of the plurality of voltage
regulation devices from the clamp circuit, thereby modifying the clamping threshold of
the clamp circuit.”
The specification, at page 13, describes bypass device 400 (Fig. 4), whereby
either or both of fuses 415 and 420 may be blown, effectively removing diodes 311 and
313 from the circuit. We do not find description of any kind of “reversible” bypassing.
When questioned on the point at the oral hearing, appellants’ representative declined to
point out written description support for the feature, contending that the feature is not
present in the claims that remain in the application. Instant claim 15, however, remains
and contains the feature.
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