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
MARKEY, Chief Judge,
dissenting.
I respectfully, but heartily, dissent.
The board, on reconsideration, said, “we did not, in our first rejection of claim 18, indicate that there was lack of enablement or that one having ordinary skill in the art could not practice the invention, rather we dealt with only that part of the statute directed to the description.”
How incongruous. How exaltive of form over substance. How illustrative of stare decisis rampant. The board is saying that it doesn’t matter that one discloses an invention in such “clear, concise and exact terms” (enablement) as to enable its practice, the very purpose and quid pro quo of the patent system from its inception.
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.
There is no surplusage in saying, as the Congress in effect did, “ * * * a written description of the invention * * * in such full, clear, concise, and exact terms as to enable,” and “[a written description] of the manner and process of making and using it in such full, clear, concise, and exact terms as to enable * * *.” On the contrary, Congress saved words by specifying, in a single prepositional phrase, that the description of the invention, and the description of the manner of making and using it, shall both be in “such full, clear, concise, and exact terms as to enable.” Section 112, first paragraph, is a simple sentence, with a comma after “it,” making the phrase “in such full * * * the same” a modifier of both objects of the *595 verb “contain.” All before that comma prescribes what shall be described. The phrase following the comma prescribes how and for whom it shall be described.
We should not hesitate to recognize that it would have been better if the court had held, in certain past chemical cases, that whatever “enablement” was present, it was not in “full, clear, concise and exact terms,” rather than to have created a “separate description” gloss. We certainly should not hesitate to do so when the court finds its creation being bent out of shape, as here.
An illustration of the superfluousness of a separate “description” requirement lies in the board’s use of the same alleged defect as the foundation for three rejections.
To employ the judicially-created “separate description” requirement, developed in complex chemical cases, to this simplest of mechanical inventions is to disregard all that Judge Lane said for the court in In re Fisher, 427 F.2d 833, 839 , 57 CCPA 1099, 1108, 166 USPQ 18 , 24 (1970).
Contrary to the board’s view, the number of shingles is not critical. Appellants’ original claim 1 specified merely “a course of shingles.” There is no rejection of the claim as open-ended. Appellants’ shingles are disclosed as being of varying widths. Whatever the width and number of shingles available, every carpenter would use enough to cover the hole! Claim 18 just says that there is no infringement if less than six shingles are used.
I cannot see how one may, in “full, clear, concise and exact terms,” enable the skilled to practice an invention, and still have failed to “describe” it.
Appellant disclosed eight shingles. I can’t escape the view that eight includes “at least 6.”