Appeal No. 2006-2023 Page 11
Application No. 10/650,785
Under these circumstances, we hold that the ‘044 disclosure does not satisfy the
written description requirement of 35 U.S.C. § 112, ¶1, with respect to the subject
matter of appealed claim 1, which broadly encompasses a method that does not involve
dispersion of the resin in water. LizardTech Inc. v. Earth Resource Mapping, Inc., 424
F.3d 1336, 1343-44, 76 USPQ2d 1724, 1731 (Fed. Cir. 2005)(“While it is true that not
every advantage of the invention must appear in every claim...it would be peculiar for
the claims to cover prior art that suffers from precisely the same problems that the
specification focuses on solving.”); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473, 1479, 45 USPQ2d 1498, 1502-03 (Fed. Cir. 1998)(holding that patent claims
directed to a sectional sofa were invalid as lacking written description under 35 U.S.C.
§ 112, ¶1, because they did not limit the location of the reclining controls to the console
area in direct conflict with the original disclosure, which identified the console area as
the only possible location of the controls); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159,
47 USPQ2d 1829, 1833 (Fed. Cir. 1988)(“[T]he only reference in the ‘589 patent’s
specification to different shapes [for a cup in a prosthesis] is a recitation of the prior
art...Instead of suggesting that the ‘589 patent encompasses additional shapes, the
specification specifically distinguishes the prior art as inferior and touts the advantages
of the conical shape of the ‘589 cup.”).
The appellants’ reliance on the description at pages 12-13 of the ‘044 application
is misplaced. Even that description makes it clear to one skilled in the relevant art that
step b (the dispersing step) is indispensable to the invention. (Page 13, lines 3-4.) The
invention recited in appealed claim 1, which is significantly broader in scope, is
therefore directed to a different invention.
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