Written Description Does Not Require Explicit Disclosure of Claim Terms

Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT).

In an application involving a method of mobile communication, the examiner rejected the claims because the subject matter was not “described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time of the application was filed, had possession of the claimed invention.” Specifically, the examiner contended that an explicit limitation in the claims was not present in the written description.

The BPAI reversed the rejection, finding that the original disclosure provided adequate support.

We find that the original description, albeit in different language than is now claimed, would have conveyed to the artisan that the inventors had possession of the subject matter which they now claim at the time of filing the application.

In its decision, the Board affirmed the principle that an “explicit” disclosure of claim terms is not required under 35 U.S.C. § 112, first paragraph. “An invention claimed need not be described ipsis verbis in the specification in order to satisfy the disclosure requirements.

Follow Up:

• Ex parte Holt, 19 USPQ2d 1211 (BPAI 1991).
• File Attachment: Eggleston Decision (19 KB)