Description Does Not Have to be In Haec Verba, But It Does Have to Show Inventor was in Possession of the Invention

In re Lew, [2007-1196](November 29, 2007)[GAJARSA, Newman, Linn] The Federal Circuit affirmed the BPAI's affirmance of the final rejection of the sole claim pending.
SIGNIFICANCE: The test of new matter or compliance with written description is whether a person of ordinary skill would know that the inventor was in possession of the subject matter.
A specific reference to what the invention is in the specification will limit the scope.
BRIEF: Lew cancelled all of the original claims and presented a new claim 19 and submitted a substitute specification. The substitute specification was essentially identical to the prior specification, except that each use of the term "ball bearings" was replaced with "curved members," a term not previously used anywhere in the application, and references to "pockets" were replaced with "slots." The PTO examiner objected to the substitute written description and rejected the new claim on the grounds that the amendments introduced new matter into the application that was not supported by the initial disclosure. The Board affirmed.
The Federal Circuit said that we have long explained that the written description requirement of § 112 requires the application to "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." The claimed subject matter need not be described "in haec verba" in the original specification in order to satisfy the written description requirement. Rather, "the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application." LOF: Whether an amendment violates the written description requirement of 35 U.S.C. § 112 and the new matter prohibition of 35 U.S.C. § 132 are questions of fact. The Federal Circuit noted that
there was no language in the original written description that would suggest that using “ball bearings” was only one specific embodiment of Lew’s invention. To the contrary, the Federal Circuit found that each time “the invention” was described, including in the summary of the invention and the abstract, it was stated to include “ball bearings.”
The Federal Circuit concluded that substantial evidence supports the Board’s determination that Lew’s amendments to replace the term “ball bearing” with the broader term “curved member” were not supported by the initial disclosure, and, therefore, the examiner did not err in rejecting claim 19 under § 112, first paragraph, and affirmed the BPAI.