Appeal 2007-3797
Application 10/453,061
first paragraph written descriptive support in the Specification, as filed. The
amended limitation at issue is: “paper having no heat activated image
producing chemical coating thereon” (Claims 1, 22, 26, and 29).
The question that must be considered is whether the originally filed
disclosure reasonably conveys to one of ordinary skill in the art that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The
possession of the later claimed subject matter can be established by showing
that the disclosed subject matter expressly, implicitly, and/or inherently (i.e.,
necessarily) satisfies the limitation in question. See, e.g., Kennecott Corp. v.
Kyocera Intern., Inc., 835 F.2d 1419, 1423, 5 USPQ2d 1194, 1198 (Fed. Cir.
1987), cert. denied, 486 U.S. 1008 (1988). However, a disclosure that
merely renders the later-claimed invention obvious is not sufficient to meet
the written description requirement; the disclosure must describe the claimed
invention with all its limitations. See Tronzo v. Biomet Inc., 156 F.3d 1154,
1158-60, 47 USPQ2d 1829, 1832-34 (Fed. Cir. 1998); Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997); In re Winkhaus, 527 F.2d 637, 639-640, 188 USPQ 129,
131 (CCPA 1975).
The written description inquiry is a factual one and must be assessed
on a case-by-case basis. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1561, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). The Examiner bears the
initial burden of establishing a prima facie case of a violation of the
description requirements of § 112, first paragraph. See In re Alton, 76 F.3d
1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996).
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013