Appeal 2006-2870
Application 10/401,509
definite and limited class of measurement devices and resist properties that
provide support for the claimed species within the guidelines set by Petering
and Sivaramakrishnan decisions. We do not agree. As pointed out by the
Examiner (Answer 6), Appellants’ arguments to the contrary
notwithstanding, the original disclosure states that the measurement devices
and resist properties are not limited to those listed as examples
(Specification 10:21-22 and 16:24-29).
Lastly, to whatever extent Appellants are suggesting (Reply Br. 5) that
the question of whether Appellants’ disclosure renders the claimed invention
obvious is an issue to be considered in this appeal, we are in total agreement
with the Examiner’s position as articulated at page 7 of the Answer. As
summarized by the Examiner, even though various portions of Appellants’
specification and the incorporated references may individually disclose
various aspects of the claimed invention, there is no disclosure which
supports the claimed invention as a whole. As stated by the Federal Circuit
in Lockwood v. American Airlines Inc., 107 F.3d 1565, 1571, 41 USPQ2d
1961, 1966 (Fed. Cir. 1997), “[e]ntitlement to a filing date does not extend
to subject matter which is not disclosed, but would be obvious over what is
expressly disclosed. It extends only to that which is disclosed.” The Court
continued by stating “[i]t is not sufficient for purposes of the written
description requirement of Section 112 that the disclosure, when combined
with the knowledge of the art, would lead one to speculate as to
modifications that the inventor might have envisioned, but failed to disclose.
In view of the above discussion, it is our opinion that, under the
factual situation presented in the present case, the statutory written
description requirement has not been satisfied because Appellants were
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