Monday, November 25, 2013

Timorous statement in specification fails written description

Appellant lost in Ex parte Darcy with PTAB stating

Merely listing one way, or even many ways, to achieve a result does not always apprise one of ordinary skill in the art of all ways to achieve a result. Here, we merely have a timorous statement in Appellants’ disclosure that the claimed range “may cause breaking.” Spec., para. [0041]. This statement does not allow one of ordinary skill in the art to envision or derive the claimed solution. There is no discussion to expand on this; for example, a disclosure of what causes breaking but not melting, so that one of ordinary skill could envision what other claimed wavelengths would work.


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