Original claims can provide written description support even for later added claims. Here, for example, the asserted claims were found to be supported by the original disclosure even though the specification focused on a narrower embodiment and even though the asserted claims were added during prosecution because the original claims were similarly broad. “[A] specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes … [especially] where the originally filed claims are not limited to the embodiment or purpose that is the focus of the specification.” This would be a good case to consult and cite in response to a written description rejection of new claims added during prosecution where the original claims contained similarly broad aspects.
Background / Facts: The patent being asserted here is directed to a “collating unit” used with a control center and an automatic dispensing system (“ADS”) to store prescription containers after a medication has been dispensed into the containers. While the specification largely focuses on sorting prescription containers by patient-identifying information, the asserted claims, added during prosecution, more broadly recite “automatically storing” the prescription containers without specifying the sorting criteria.
Issue(s): Whether the broader claims are invalid for lack of written description support.
Holding(s): No. “[A] specification’s focus on one particular embodiment or purpose cannot limit the described invention where that specification expressly contemplates other embodiments or purposes. This is especially true in cases such as this, where the originally filed claims are not limited to the embodiment or purpose that is the focus of the specification.” The court noted in particular that “the original claims filed as part of the application from which the [] patent issued were not limited to sorting and storing prescription containers by patient-identifying information. Rather, these original claims, like the asserted claims, recite a collating unit that automatically stores prescription containers dispensed by an ADS. As we have explained, ‘[o]riginal claims are part of the specification and in many cases will satisfy the written description requirement.’’