Appeal 2007-1647
Application 10/631,841
We begin our analysis by noting that the Court of Appeals for the
Federal Circuit has held that “[t]o fulfill the written description requirement,
the patent specification must describe an invention in sufficient detail that
one skilled in the art can clearly conclude that the inventor invented what is
claimed.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1364 (Fed.
Cir. 2003) (citations omitted). Our reviewing court has cautioned, however,
that “[t]he disclosure as originally filed does not . . . have to provide in haec
verba support for the claimed subject matter at issue.” Id. at 1364.
“Although [the applicant] does not have to describe exactly the subject
matter claimed, . . . the description must clearly allow persons of ordinary
skill in the art to recognize that [he or she] invented what is claimed.” In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989) (citations omitted). Put
another way, “the 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.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991) (emphasis in original). The written description, although it
need not include information that is already known and available to the
experienced public, must be in sufficient detail to satisfy the statutory
requirements, employing “[w]ords, structures, figures, diagrams, formulas,
etc., that fully set forth the claimed invention.” Space Systems/Loral, Inc. v.
Lockheed Martin Corp., 405 F.3d 985, 987 (Fed. Cir. 2005) (quoting
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
Finally, “[p]recisely how close the original description must come to comply
with the description requirement of § 112 must be determined on a
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