Appeal 2007-0408
Application 10/150,014
descriptive support under 35 U.S.C. § 112, ¶ 1. As found by the Examiner,
the scope of the claims is broader than the discussion of the invention in the
original written description. The broadest description of the invention
resides in the beginning of the Summary of the Invention and the original
claim 1 which set forth the inclusion of layers (a) tin oxide (b) titanium or
nickel oxide, (c) silver, (d) nickel oxide, (e) tin oxide, (f) titanium or nickel
oxide, (g) silver, (h) nickel oxide, (i) tin oxide, and (j) silicon nitride. While,
according to the Specification, other layers can be added, there is no other
disclosure of any substitutions for layers (a) through (j).
Appellant attempts to cast the description of the (a) through (j) coating
system as the best mode of carrying out the invention or an example
embodiment. The problem is that the “mode” described in the Specification
in the Summary of the Invention is the broadest description of the coating
composition. The further discussion of that coating system with reference to
Figure 1 as “one form of the layer systems” (Specification 25) and another
more narrow embodiment with more layers (Figure 1A, Specification 26) in
the Detailed Description of the Invention does not change that fact.
While a description of the invention which is narrower than the
subject matter encompassed by the claims will not always result in a failure
to fulfill the written description requirement of 35 U.S.C. § 112, first
paragraph, see In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973), “the case law does ‘not compel the conclusion that a
description of a species always constitutes a description of a genus of which
it is a part’” either. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)(quoting Regents of the Univ.
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405
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