HP loses in Ex parte Barr

From Ex parte Barr

Of written description


We agree with the Examiner, and further find that the meaning of one
of the limitations of the claims cannot be determined from the Specification
and drawings. The factual inquiry for determining whether a Specification
provides sufficient written description for the claimed invention is whether
the specification conveys with reasonable clarity to those skilled in the art
that, as of the filing date sought, Appellants were in possession of the
invention as currently claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64 (Fed. Cir. 1991). Appellants may show possession of the claimed
invention by describing the invention with all of its limitations using such
descriptive means as words, structures, figures, diagrams, and formulas that
fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997).



Note the procedural reversal:


Because claims 1-3 and 5-7 are rejected under 35 U.S.C. § 112,
second paragraph as being indefinite, in comparing the subject matter of
claims 1-3 and 5-7 with the applied prior art, it is apparent to us that
considerable speculations and assumptions are necessary in order to
determine what is in fact being claimed. As a rejection based on prior art
cannot be based on speculations and assumptions, see In re Steele, 305 F.2d
859, 862 (CCPA 1962), we are constrained to reverse, pro forma, the
Examiner's rejections of the claims under 35 U.S.C. § 103(a). We add that
this is a procedural reversal rather than one based upon the merits of the
rejections.