Appeal No. 2005-1431
Application 09/442,070
USPQ2d [1111,] 1116 [(Fed. Cir. 1991)]; Continental Can Co. USA v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991) (descriptive
matter may be inherently present in a specification if one skilled in the art would
necessarily recognize such a disclosure).
See also Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed. Cir. 1998)
("In order for a disclosure to be inherent . . . the missing descriptive matter must necessarily be
present in the . . . application's specification such that one skilled in the art would recognize
such a disclosure."). It is therefore necessary to distinguish between inherency, which can be
relied on to establish written description support, and obviousness, which cannot. Lockwood,
107 F.3d at 1572, 41 USPQ2d at 1966.
Reissue claims are given their broadest reasonable interpretation. In re Reuter, 651 F.2d
751, 756, 210 USPQ 249, 253 (CCPA 1981). Where, as here, application claims have been
copied from a patent for the purpose of provoking an interference, the application claims must be
construed in light of the originating patent disclosure for purposes of making an ex parte
determination of whether the claims have written description support in the copier's application.
See In re Spina, 975 F.2d 854, 856, 858, 24 USPQ2d 1142, 1144-45 (Fed. Cir. 1992); accord,
Rowe v. Dror, 112 F.3d 473, 479 n.2, 42 USPQ2d 1550, 1554 n.2 (Fed. Cir. 1997).
Consequently, the claims will be given their broadest reasonable interpretation consistent with
the disclosure of the Doyle patent, which has a filing date of October 17, 1994.
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