Appeal 2007-1414
Application 10/453,559
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed.
Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). Compliance with the written description requirement is
essentially a fact-based inquiry that will “necessarily vary depending on the
nature of the invention claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991) (quoting In re DiLeone, 436
F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA 1971)), quoted with approval
in Enzo, 323 F.3d at 963, 63 USPQ2d at 1612.
Here, the Examiner maintains that:
The specification fails to teach determining a display characteristic of
the one or more annotations associated with the digital image. At the
most an annotation's priority will determine the display order or
location of the annotations. The term "display characteristic" covers
much more than that which is disclosed on page 9. Color, intensity,
rotation, movement, etc are examples of display characteristics. Since
the claim specifically recites "display characteristic" then the claim is
clearly covering display characteristics that are not disclosed by the
specification and claims away from that which is discussed on page 9
line 20 to page 10 line 9 of applicants specification. Therefore, the
application fails to convey that applicant had possession of the
currently claimed invention. (Answer 3-4).
Appellants dispute the Examiner’s requirement for the need to
explicitly disclose all examples of an invention. Appellants rely upon the
following legal premise in the Reply Brief at pages 2-3.
A claim will not be invalidated on section 112 grounds simply
because the embodiments of the specification do not contain examples
explicitly covering the full scope of the claim language. See Union Oil
Co. v. Atl. Richfield Co., 208 F.3d 989, 997 [54 USPQ2d 1227] (Fed.
Cir. 2000). That is because the patent specification is written for a
person of skill in the art, and such a person comes to the patent with
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