Can an original claim lack written description support?
Yes, an original claim can lack written description support. According to MPEP 2163.03:
“While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim.”
The MPEP outlines two specific scenarios where an original claim may lack written description support:
- “The claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved”
- “A broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated”
Additionally, the MPEP notes:
“The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. ‘Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed.'”
This means that merely repeating the claim language in the specification is not always sufficient to meet the written description requirement. The specification must provide enough detail for a person skilled in the art to understand the full scope of the claimed invention.
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