Thursday, December 28, 2017

Of interest in Nintendo v. iLife

Nintendo argues that under our opinion in PowerOasis,
the Board was required to review the new disclosure
added to the continuation-in-part application and determine
whether that content corresponds to the particular
claim limitations in dispute. This misreads our precedent.
PowerOasis, along with our other written description
precedent, explains that “[t]o satisfy the written
description requirement the disclosure of the prior
application must ‘convey with reasonable clarity to
those skilled in the art that, as of the filing date sought,
[the inventor] was in possession of the invention.’” 522
F.3d at 1306 (emphasis added) (quoting Vas–Cath, 935
F.2d at 1563–64). Thus, the key question is whether the
descriptive matter is present in the original application,
not whether it is also present in any added disclosure.


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