Appeal No. 2005-1953 Page 7
Application No. 09/765,533
The written description requirement of § 112, first paragraph, entitles the
Appellant to claim only that which is described in the application, and does not extend
to subject matter which is not described, but would be obvious over what is expressly
disclosed. Cf. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41
USPQ2d 1961, 1966 (Fed. Cir. 1997); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991)("[T]he applicant must also convey
to those skilled in the art that, as of the filing date sought, he or she was in possession
of the invention. The invention is, for purposes of the ‘written description' inquiry,
whatever is now claimed.") . In the present case, Appellant has not directed us to
evidence in the specification, as originally filed, or in the provisional applications that
describes the lines added to the “marked up” figure 8 to form the claimed rectangles.
We have not been directed to portions of the record that explain why the lines (of only
6
figure 8) should be extended to connect so as to form the claimed rectangles. While
it might have been obvious to extend the lines as Appellant has presented in “marked
up” figure 8 this is not the proper standard for determining if the record provides an
adequate written disclosure. In view of the above, the application as originally filed
and the provisional applications do not provide descriptive support for claim 23 in the
manner provided for in the first paragraph of § 112.
6Appellant has not directed us to portions of the record which discloses that the first lines and
second lines of figure 8 should be extended but not the diagonal lines contained therein.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007