Selected patent law 3-29-2017
Whether a specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact. Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997) citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). 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). “Although the applicant does not have to describe exactly the subject matter claimed, the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). Non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In r...
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