Appeal 2007-1928
Application 10/163,282
written description requirement “by describing the invention, with all its claimed
limitations, not that which makes it obvious,” and by using “such descriptive
means as words, structures, figures, diagrams, formulas, etc., that set forth the
claimed invention.” Id. citing Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966.
It is important to note that “[t]he invention is, for purposes of the ‘written
description’ inquiry, whatever is now claimed.” Vas-Cath at 1564, 19 USPQ2d at
1117.
Section 112, second paragraph, is satisfied if a person skilled in the field of
the invention would reasonably understand the claim when read in the context of
the specification. Marley Mouldings Limited v Mikron Industries, Inc., 417 F.3d
1356, 1359, 75 USPQ2d 1954, 1956 (Fed. Cir. 2005) (citing Union Pac. Res. Co.
v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed.
Cir. 2001) (the definiteness requirement set forth in § 112, ¶ 2 “focuses on whether
those skilled in the art would understand the scope of the claim when the claim is
read in light of the rest of the specification”)); Miles Labs., Inc. v. Shandon, 997
F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (if the claims “reasonably
apprise those skilled in the art of the scope of the invention, § 112 demands no
more”); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) (the
indefiniteness inquiry asks whether the claims “circumscribe a particular area with
a reasonable degree of precision and particularity”).
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907
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