Appeal No. 2005-1431
Application 09/442,070
See Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed.
Cir. 2003) (emphasis added):
Paragraph 1 of section 112 of the Patent Act provides that the
"specification shall contain a written description of the invention." To
fulfill the written description requirement, the patent specification must
describe an invention in sufficient detail that one skilled in the art can
clearly conclude that the inventor invented what is claimed. Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 [41 USPQ2d 1961, 1966] (Fed.
Cir. 1997); In re Gosteli, 872 F.2d 1008, 1012 [10 USPQ2d 1614, 1618]
(Fed. Cir. 1989).
"It is not sufficient for purposes of the written description requirement of § 112 that the
disclosure, when combined with the knowledge in the art, would lead one to speculate as to
modifications that the inventor might have envisioned, but failed to disclose." Lockwood,
107 F.3d at 1572, 41 USPQ2d at 1966. See also Amgen, Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1330, 65 USPQ2d 1385, 1397 (Fed. Cir. 2003) ("The purpose of the written
description requirement is to prevent an applicant from later asserting that he invented that which
he did not; the applicant for a patent is therefore required to 'recount his invention in such detail
that his future claims can be determined to be encompassed within his original creation.' [Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555,] 1561, 19 USPQ2d [1111,] 1115 [(Fed. Cir. 1991)]
(citation omitted)." Separating incorporations by reference from the written description
requirement of § 112, first paragraph, by permitting applicants to incorporate by reference entire
documents without an explanation of what they are being relied on to show would invite the
wholesale incorporation by reference of large numbers of documents and correspondingly
increase the burden on examiners, the public, and the courts to determine the metes and bounds
34
Page: Previous 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 Next
Last modified: November 3, 2007