holding that a broad claim requiring selecting a backing board having a length at least as long as six shingles is not supported by a specification contemplating only backing boards the length of eight or sixteen shingles
How later courts described this case
- holding that a broad claim requiring selecting a backing board having a length at least as long as six shingles is not supported by a specification contemplating only backing boards the length of eight or sixteen shingles
- stating in the context of a later added claim attempting to obtain priority to the original application that did not describe a limitation of the later added claim
- "The attempt to create historical and current statutory support for a separate description requirement, which was solely a judicial (and unnecessary) response to chemical cases in which appellants were arguing that those skilled in the art might make and use a claimed invention, is mistaken."
- the goal of the written description requirement is "to clearly convey the information that an applicant has invented the subject matter which is claimed"
Written by the judges who cited it.
The opinion
RICH, Judge,
concurring.
I agree with the result reached by the majority but, for a relatively uncomplicated case, the opinion unduly complicates matters.
The basic problem here is simple: new matter, in violation of 35 U.S.C. § 132 , was inserted by amendment and the claim contains that new matter. It therefore lacks support and must be rejected. The decision is in accord with many of our prior interpretations of 35 U.S.C. § 112 and there is no need to justify it by extensive review of the evolution since 1790 of the language of § 112, first paragraph.
Considering the evolutionary history of the language of § 112,1 do not subscribe to its interpretation through assumptions based on presumptions about usage of superfluous words and the like. The words are of ancient lineage and, in spite of the fact they are inappropriate to some situations, they were preserved, in writing the Patent Act of 1952, because they were familiar and had many times been construed. Some simplifications and clarifications were made, but the classic phrases were retained without regard to “superfluous words.” Mere reading of the successive statutes quoted by the majority shows that the words of § 112 derive from an era when it was the habit of the legal fraternity to indulge in redundancies.
Particularly irrelevant, in my view, is any discussion of the wording of 35 U.S.C. § 171 on designs, discussed by the majority in footnote 3.
While the majority opinion states, in footnote 6, that, in applying the statute, we have but a single standard for simple and complex cases, the fact is that different fact situations demand different treatment. In re Nelson, 280 F.2d 172, 184 , 47 CCPA 1031, 1048, 126 USPQ 242 , 253 (1960). Attention must be paid to the key words “such” and “as to” in the phrase “such full, clear, concise, and exact terms as to enable,” which compel case-by-case treatment of issues of the sufficiency of description and enablement which, I agree, are distinct though commingled requirements.