Appellants lose on written description in Ex parte Brown

Ex parte Brown


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 fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, an applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64.
Appellant points to various portions of the Specification as providing support for the subject recitations in claims 1, 11, and 20 (App. Br. 12-14). However, we agree with the Examiner that the identified figures and portions of the Specification only disclose that a user may be identified, e.g., by voice identification, as authorized to receive care specific to a patient, or alternatively, as being authorized to receive care specific to one of a plurality of disease types (Ans. 6). We find nothing in the Specification, nor does Appellant point to anything, that describes a multi-step process, as called for in claims 1, 11, and 20, in which an attempt is first made to identify a user, based on voice, as being a patient authorized to receive care specific to the patient; then, if the voice identification is not successful, a further attempt is made to identify the user as being a patient authorized to receive care specific to one of a plurality of disease types.

We find that the Specification does not convey with reasonable clarity to those skilled in the art that Appellant was in possession of the invention as set forth in independent claims 1, 11, and 20, including the multi-step identification process recited in the claims, at the time the application was filed. Therefore, we will sustain the Examiner’s rejection of claims 1-21 under 35 U.S.C. § 112, first paragraph.