Appeal No. 2007-0111
Reexamination 90/006,297
1 (Fed. Cir. 2005)(en banc)(“ a court should discount any expert testimony ‘that is
2 clearly at odds with the claim construction mandated by the claims themselves, the
3 written description, and the prosecution history, in other words, with the written
4 record of the patent.’”); Mukherjee v. Chu, No. 2006-1450, slip op. at 8 (Fed. Cir.
5 Feb. 15, 2007)(non-precedential)(deferring to the Board’s determination of weight
6 and credibility of a declarant based on (in)consistency with the text of the written
7 description itself).
8 Because Vandenberg issued on October 16, 1962 and the patentees did not
9 present subject matter even generally descriptive of the invention recited in the
10 appealed claims until October 2, 1964, we hold that Vandenberg is available as
11 prior art under 35 U.S.C. § 102(b).
12 Our ruling here today is in accordance with the written description
13 precedents of our reviewing circuit court, which has explained that later-presented
14 claims may not broaden the invention in a way that is contrary to, or inconsistent
15 with, its supporting disclosure, as originally filed. Cf. Gentry Gallery, Inc. v.
16 Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1502-03 (Fed. Cir. 1998).
17 There, the court held that patent claims directed to a sectional sofa were invalid as
18 lacking written description under 35 U.S.C. § 112, ¶1, because they did not limit
19 the location of the reclining controls to the console area in direct conflict with the
20 original disclosure, which identified the console as the only possible location of the
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