Appeal No. 2007-0744
Application No. 10/007,866
Written description is a question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date. See Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1119 (Fed. Cir. 1991). In the present
case, it has not been shown that one of ordinary skill in the art would have understood
that the resulting compound of Example 1 would necessarily and inherently have the
carboxylic acid content and acid number appellants attribute to it.
Appellants rely on Application of Nathan, 328 F.2d 1005, 1006, 140 USPQ 601,
604 (C.C.P.A. 1964), and Regents of the University of New Mexico v. Knight, 321 F.3d
1111, 1122, 66 USPQ2d 1001, 1009 (Fed. Cir. 2003), as authority supporting the
amendment of the specification of an application with an inherent feature of a chemical
compound described therein. Brief, pages 5-6; Reply Brief, page 3.
Appellants argue that carboxylic acid content of 10.57% and acid number of
133.9 are inherent in the resulting compound of Example 1, thus justifying amendment
of the specification and claim 36 in this case as they did in Nathan and Knight. If such
properties are as critical to the claimed invention as they appear to be, the written
description of the specification must recite such physical and chemical properties.
We do not disagree that a specification can be amended to recite inherent
properties of a chemical compound disclosed therein. Appellants are reminded,
however, that arguments of counsel cannot take the place of evidence. In re DeBlauwe,
736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), In re Payne, 606 F.2d 303,
315, 203 USPQ 245, 256 (CCPA 1979). In the present case, Appellants have put forth
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