The written description requirement has been consistently held to be separate from the enablement requirement. It is not enough that one skilled in the art could have made and used a particular combination of elements based on the applicant’s specification – the applicant himself must have thought of (as evidenced by the description) that particular combination as of his filing date to be able to claim it. This case therefore highlights the value of providing various examples and combinations of different elements in the specification.
Background / Facts: The patent at issue was directed to completing retail point-of-sale transactions involving various debit cards. According to the specification, the purpose of the invention was to “provide an inexpensive way of providing purchasing options to customers without the need for high capital investment by the retailer.” To this end, the claims variously recite processing debit purchase transactions using one or more authorization codes, including a general authorization code, a clerk authorization code, and a customer authorization code. During prosecution and a subsequent reexamination, several of the independent claims were amended to recite using all three of these authorization codes in combination, which distinguished from the prior art that only taught using a general authorization code. However, there is not a single embodiment disclosed in the specification that actually describes using all three of the authorization codes in combination.
Issue(s): Whether it can be inferred from the specification’s description of several different combinations of two of the three authorization codes that the inventors were in possession of an invention claimed as using all three.
Holding(s): No. Although the patentee need not “spell out every detail of the invention,” the possession requirement of 35 U.S.C. § 112, ¶1 demands that the written description “show that the inventor actually invented the invention claimed.” This description requirement exists “regardless [of] whether one of skill in the art could make or use the claimed invention.” Here, there is no method in the specification that recites all three authorization steps, each being an important aspect and critical to the claims surviving reexamination.