Standard for Determining Compliance With the Written Description Requirement

The courts have described the essential question to be addressed in a

description requirement issue in a variety of ways. An objective standard for

determining compliance with the written description requirement is, “does the

description 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, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989).

Under

Vas-Cath, Inc.

v.

Mahurkar,

935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.

1991), to satisfy the written description requirement, an applicant must convey with

reasonable clarity to those skilled in the art that, as of the filing date sought, the

inventor was in possession of the invention, and that the invention, in that context, is

whatever is now claimed. The test for sufficiency of support in a parent application is

whether the disclosure of the application relied upon “reasonably conveys to the artisan

that the inventor had possession at that time of the later claimed subject matter.”

Ralston Purina Co.

v.

Far-Mar-Co., Inc.,

772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir.

1985) (quoting

In re

Kaslow,

707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.

1983)).

Whenever the issue arises, the fundamental factual inquiry is whether

the specification conveys with reasonable clarity to those skilled in the art that, as

of the filing date sought, inventor was in possession of the invention as now claimed.

See, e.g.,

Vas-Cath, Inc. v. Mahurkar,

935 F.2d 1555, 1563-64, 19

USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows that the inventor was in

possession of the claimed invention by describing the claimed invention with all of its

limitations using such descriptive means as words, structures, figures, diagrams, and

formulas that fully set forth the claimed invention.

Lockwood v. Am. Airlines,

Inc.,

107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)

19

USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows that the inventor was in

possession of the claimed invention by describing the claimed invention with all of its

limitations using such descriptive means as words, structures, figures, diagrams, and

formulas that fully set forth the claimed invention.

Lockwood v. Am. Airlines,

Inc.,

107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).

Possession may be shown in a variety of ways including description of an actual

reduction to practice, or by showing that the invention was “ready for patenting” such

as by the disclosure of drawings or structural chemical formulas that show that the

invention was complete, or by describing distinguishing identifying characteristics

sufficient to show that the inventor was in possession of the claimed invention. See,

e.g.,

Pfaff v. Wells Elecs., Inc.,

525 U.S. 55, 68, 119 S.Ct. 304,

312, 48 USPQ2d 1641, 1647 (1998);

Regents of the Univ. of Cal. v. Eli

Lilly,

119 F.3d 1559, 1568, 43 USPQ2d 1398, 1406 (Fed. Cir. 1997);

Amgen, Inc. v. Chugai Pharm.,

927 F.2d 1200, 1206, 18 USPQ2d 1016,

1021 (Fed. Cir. 1991) (one must define a compound by “whatever characteristics

sufficiently distinguish it”).

The subject matter of the claim need not be described literally (i.e.,

using the same terms or

in haec verba

) in order for the disclosure to

satisfy the description requirement. If a claim is amended to include subject matter,

limitations, or terminology not present in the application as filed, involving a

departure from, addition to, or deletion from the disclosure of the application as

filed, the examiner should conclude that the claimed subject matter is not described in

that application. This conclusion will result in the rejection of the claims affected

under

35

U.S.C. 112(a)

or

pre-AIA 35 U.S.C.112

, first

paragraph - description requirement, or denial of the benefit of the filing date of a

previously filed application, as appropriate

rom the disclosure of the application as

filed, the examiner should conclude that the claimed subject matter is not described in

that application. This conclusion will result in the rejection of the claims affected

under

35

U.S.C. 112(a)

or

pre-AIA 35 U.S.C.112

, first

paragraph - description requirement, or denial of the benefit of the filing date of a

previously filed application, as appropriate.

See

MPEP

§ 2163

for examination guidelines pertaining to the written

description requirement.