Results for Written Description Requirement
“Unclaimed boundary” lines in continuation application for design patent, which indicate that applicant has disclaimed portion beyond boundary while claiming area within it, typically should satisfy written description requirement only if lines make explicit boundary that already exists, but was unclaimed, in original disclosure.
Patentee cannot always satisfy written description requirement, in supporting expansive claim language, merely by clearly describing one embodiment of the claimed invention; specification of patent for method of digital compression using discreet wavelet transforms, which discloses single method of creating “seamless” DWT, does not entitle inventor to claim any and all means for achieving that objective.
In view of the specification and testimony that the inventor had not, at the time the patent application was filed, considered a particular structural arrangement encompassed by claims broadened during prosecution, the Federal Circuit invalidates these claims based on the written description requirement.
Claims directed to isolated DNA molecules encoding proteins that inhibit cytotoxic effects of tumor necrosis factor were properly rejected for failure to satisfy written description requirement of 35 U.S.C. § 112 because the specification provided only partial amino acid sequence and, therefore, it cannot be held that DNA molecules claimed in application have been described.
Absent some indication in written description and/or prosecution history that inventor intended claim term to cover more than ordinary and customary meaning revealed by context of intrinsic record, it is improper to read term to encompass broader definition found in dictionary; in action for infringement of claims directed to board used in constructing floors, intrinsic record limits scope of term “board” to wood cut from log.
In common parlance, as well as in the case law, the three requirements of § 112, ¶ 1 are the “written description requirement,” the “enablement requirement,” and the “best mode requirement.” For the written description requirement, a description of what a claimed material does, rather than what it is, usually does not suffice. In this case, the Rochester ‘850 patent discloses nothing more than a hoped-for function for an as-yet-to-be discovered compound and a research plan for trying to find it.