Appeal No. 2006-1595
Application No. 09/798,484
supports claims not originally in the application. That is, written description
issues typically involve whether the original application adequately supports
claims added after filing or whether material added to the specification
constitutes new matter under 35 U.S.C. § 132. See MPEP § 2163(I). See also
MPEP § 2163.03 (citing four situations where written description issues typically
arise). Accordingly, a strong presumption exists that an adequate written
description of the claimed invention is present when the application is filed.
MPEP § 2163(I)(A) [emphasis added]. Nevertheless, a question of whether the
specification provides an adequate written description may arise even for an
original claim when an aspect of the claimed invention has not been described
with sufficient particularity that one skilled in the art would recognize that the
applicant had possession of the claimed invention [id.]. In view of the strong
presumption that the written description of the originally-claimed invention is
adequate, however, rejections of original claims for lack of written description
should be rare. MPEP § 2163.03.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that the skilled artisan can
reasonably conclude that the inventor had possession of the claimed invention.
See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d
1429, 1438 (Fed. Cir. 2003). Accordingly, “[t]he possession test requires
assessment from the viewpoint of one of skill in the art.” Moba, 325 F.3d at
1320, 66 USPQ2d at 1439. For original claims, possession may be shown,
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