Appeal 2006-2056
Application 10/102,192
stop buttons 32a-44a at the player positions. This button, when pressed by
the dealer, enables an individual player’s button so that the player may
perform a randomizing event that is part of the game.
PRINCIPLES OF LAW
“Whether a specification complies with the written description
requirement of [35 U.S.C. § 112, first paragraph], is a question of fact.”
Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566, 43
USPQ2d 1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089
(1998)(citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1116 (Fed. Cir. 1991)). “To fulfill the written description
requirement, a patent specification must describe an invention and do so in
sufficient detail that one skilled in the art can clearly conclude that ‘the
inventor invented the claimed invention.’” Id. citing Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (1997) and In re
Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)
(“[T]he description must clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.”) With regard to the
second paragraph requirement for "‘particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention,’" it
has been stated that the "essence of that requirement is that the language of
the claims must make it clear what subject matter they encompass." In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). This
has been frequently stated in a shortened form as a requirement that the
claims set forth the "metes and bounds" of their coverage. See, merely for
example, In re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA
1976); In re Goffe, 526 F.2d 1393, 1397, 188 USPQ 131, 135 (CCPA 1975);
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