Appeal 2007-0288
Application 10/715,408
applicant must convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she was in possession
of the invention, and that the invention, in that context, is whatever
is now claimed. The test for sufficiency of support in a parent
application is whether the disclosure of the application relied upon
“reasonably conveys to the artisan that the inventor had possession
at that time of the later claimed subject matter.” Ralston Purina
Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177,
179 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983)).
Whenever the issue arises, the fundamental factual inquiry is
whether the specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. See, e.g., Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991). An applicant shows possession of the claimed
invention by describing the claimed invention with all of its
limitations using such descriptive means as words, structures,
figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be
shown in a variety of ways including description of an actual
reduction to practice, or by showing that the invention was “ready
for patenting” such as by the disclosure of drawings or structural
chemical formulas that show that the invention was complete, or
by describing distinguishing identifying characteristics sufficient to
show that the applicant was in possession of the claimed invention.
See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304,
312, 48 USPQ2d 1641, 1647 (1998); Regents of the University of
California v. Eli Lilly, 119 F.3d 1559, 1568, 43 USPQ2d 1398,
1406 (Fed. Cir. 1997); Amgen, Inc. v. Chugai Pharmaceutical, 927
F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991) (one
must define a compound by “whatever characteristics sufficiently
distinguish it”).
The subject matter of the claim need not be described literally
(i.e., using the same terms or in haec verba) in order for the
disclosure to satisfy the description requirement. If a claim is
amended to include subject matter, limitations, or terminology not
present in the application as filed, involving a departure from,
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