Florida Patent Lawyer Blog

As the BPAI stated: "Appellants appear to argue that because the original Specification describes bonding a plurality of substrates where the base material is silicon or glass, then it must follow that the original Specification also describes bonding a 'plurality of glass substrates,' i.e., a first glass substrate and a second glass substrate."

The BPAI decided against the Appellants, stating: "We agree with the Examiner that the Specification discloses a device that is composed of only a glass substrate and a silicon substrate ... The Specification conveys with reasonable clarity to a person of ordinary skill in the art only that the claimed micro heat-transport device includes a silicon substrate ... and a glass substrate ... Just because Appellants' Specification describes bonding a plurality of substrates of glass or silicon, we do not find that this by itself, without more, conveys with reasonable clarity to a person of ordinary skill in the art bonding a plurality of glass substrates. To follow Appellants' logic would mean that the Specification also describes bonding a plurality of silicon substrates. We do not find that Appellants' Specification conveys with reasonable clarity such embodiments, i.e., bonding a plurality of glass substrates or a plurality of silicon substrates. Rather, the Specification conveys with reasonable clarity only bonding a glass substrate and a silicon substrate."

The lesson learned here is the criteria for meeting the written description requirement: conveying with reasonable clarity to a POSITA. To satisfy the written description requirement, the disclosure must convey with reasonable clarity to skilled artisans that the Appellants were in possession of the claimed invention as of the filing date. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Thus, when writing your written description, be careful to make a list of all embodiments you are or may be claiming in the future, and make sure it is disclosed with reasonable clarity to a POSITA.

First, the Examiner must provide an adequate showing regarding persons skilled in the art. The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). The Examiner provided no such argument - he simply argued that Appellant did not describe a gap width sufficient for forming an aerodynamic seal. The Examiner provided no evidentiary support and provided no reasoning regarding POSITA. The lack of the required showing weighed against the Examiner's rejection.

Second, the Examiner erred in concluding that Appellant did not provide written descriptive support for the gap. "In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue." Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). A disclosure provides adequate written description if it conveys with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. Although the Appellant didn't explicitly state the dimensions of the gap, there was enough written descriptive support surrounding the gap to adequately describe it. Specifically, the BPAI stated: "As Appellants' Specification discloses an aerodynamic seal between two elements is realized by introducing a gas into the gap between the two elements and that the pressure of the gas introduced into the gap is dependent upon, inter alia, the size of the gap." Thus, the disclosure that the gap depended on another attribute, was at least enough to describe the gap to comply with 35 U.S.C. sec. 112, first paragraph.