Appeal No. 2005-1674
Application 09/613,153
provide written description support for claims which are not limited to those two species:
[T]he specification does not teach one [of] ordinary skill in the art what
other ratio is used to screen or rank the stocks beside[s] the two ratios, i.e.,
price/sales ratio or price/earning[s] ratio. Selecting stocks or ranking
stocks based on company performance ratio is broader than what is
disclosed[;] therefore, it is new matter.
Answer at 4.
While "[a] claim will not be invalidated on section 112 grounds simply because the
embodiments of the specification do not contain examples explicitly covering the full scope of
the claim language," LizardTech, Inc. v. Earth Resources Mapping, Inc., 424 F.3d 1336, 1345,
76 USPQ2d 1724, 1732 (Fed. Cir. 2005), reh'g en banc denied, 433 F.3d 1373, 77 USPQ2d
1391 (Fed. Cir. 2006), "enough must be included to convince a person of skill in the art that the
inventor possessed the invention and to enable such a person to make and use the invention
without undue experimentation." LizardTech, 424 F.3d at 1345, 76 USPQ2d at 1732.5 "[A]
broad claim is invalid when the entirety of the specification clearly indicates that the invention is
of a much narrower scope.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365,
67 USPQ2d 1876, 1886 (Fed. Cir. 2003) (quoting Cooper Cameron Corp. v. Kvaerner Oilfield
Prod., Inc., 291 F.3d 1317, 1323, 62 USPQ2d 1846, 1851 (Fed. Cir. 2002)).
For the following reasons, we are of the opinion that appellant's specification as filed
does not clearly indicate that the invention has the narrow scope recited in the original patent
claims.
5 Appellant discusses LizardTech in a supplemental brief, filed December 19, 2005,
(Continued on next page.)
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