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A fairly uniform standard for determining compliance with the written description requirement is that although the applicant does not have to describe exactly the subject matter claimed, the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed. The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. Compliance with the "written description" requirement of 35 U.S.C.S. § 112 is a question of fact, to be reviewed under the clearly erroneous standard.
Vas-Cath Incorporated and its licensee Gambro, Inc. sued Sakharam D. Mahurkar and Quinton Instruments Company (collectively Mahurkar) for declaratory judgment that their products did not infringe Mahurkar’s utility patents. The district court entered partial final judgment declaring the patents invalid as anticipated under 35 U.S.C.S. § 102(b). The court concluded that the utility patents claims were not entitled to the benefit of earlier design patent application filing date which comprised the same drawings as the utility patents, because the application did not provide the written description required by 35 U.S.C.S. § 112, para. 1.
Were Mahurkar’s patents invalid because of failure to provide the written description required by § 112, thereby warranting the grant of summary judgment in favor of Vas-Cath?
On appeal, the Court reversed, holding that under proper circumstances, drawings alone could provide the "written description" required by § 112. A description had to clearly allow persons of ordinary skill in the art to recognize that patentee invented what was claimed. Because the combination invention was what the drawings showed, the description was sufficient to raise factual questions of patent validity, and thus summary judgment was improper.