Appeal 2007-0516
Application 10/438,506
1 (b) internal threads with a diameter different than the internal threads of the
2 flange and
3 (2) whether the original disclosure supports a one piece conversion
4 device which allows compatibility between a flange having a 2 inch
5 diameter and a mounting component having a 1 ½ inch diameter.
6 Principles of Law
7 The specification must include a written description of the invention.
8 35 U.S.C. § 112, ¶ 1 (“The specification shall contain a written description
9 of the invention . . . .”). The invention which must be described is the now
10 claimed invention. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
11 USPQ2d 1111, 1117 (Fed. Cir. 1991). (“The invention is, for purposes of
12 the ‘written description’ inquiry, whatever is now claimed.”). The original
13 disclosure “must … convey with reasonable clarity to those skilled in the art
14 that … [the inventor] was in possession of the invention.” Vas-Cath, 935
15 F.2d at 1563-64, 19 USPQ2d at 1117. Put another way, one
16 skilled in the art, reading the original disclosure, must “immediately discern
17 the limitation at issue” in the current claims. Waldemar Link GmbH & Co. v.
18 Osteonics Corp., 32 F.3d 556, 558, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994).
19 The original disclosure includes the original specification and the
20 original drawings. Amendments may not add new matter to the original
21 disclosure. 35 U.S.C. § 132(a). It is not prohibited new matter to add
22 subject matter disclosed only in the drawings to the specification. In re
23 Wolfensperger, 302 F.2d 950, 955, 133 USPQ 537, 542 (CCPA 1962)
24 (“Whatever [the drawing] does disclose may be added to the specification in
25 words without violation of the statute and rule which prohibit ‘new matter,’
26 35 U.S.C 132 . . . for the simple reason that what is originally disclosed
27 cannot be ‘new matter’ within the meaning of this law”).
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