Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

In re Wands

Holding that whether undue experimentation is required is a "conclusion reached by weighing many factual considerations. . . . includ[ing] the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in the art, the predictability or unpredictability of the art, and the breadth of the claims."

Lizardtech, Inc. v. Earth Resource Mapping

Holding that "[a]fter reading the patent, a person of skill in the art would not understand" the patentee to have invented a generic method where the patent only disclosed one embodiment of it

Atlas Powder Co. v. E.I. du Pont De Nemours & Co.

Holding that, where "patent disclosure list[ed] numerous salts, fuels, and emulsifiers that could form thousands of" claimed combinations, some of which would be inoperable, "the claims [were] not necessarily invalid" for lack of enablement unless a POSA needed to "experiment unduly in order to practice the claimed invention"

Falko-Gunter Falkner v. Inglis

Holding that where “accessible literature sources clearly provided” a description of the teachings at issue, the written description requirement does not require their incorporation by reference

Capon v. Eshhar

Holding it was error for the Board of Patent Appeals and Interferences to require "recitation in the specification of the nucleotide sequence of claimed DNA, when that sequence is already known in the field"

Agilent Tech. v. Affymetrix

Reversing the district court's holding that an applicant's written description was adequate because the court erred in its claim construction

In re Oelrich

Stating that "[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient" to establish inherency (quoting Hansgirg v. Kemmer , 102 F.2d 212, 214 (C.C.P.A. 1939) )

In re Oetiker

Reversing for "improperly combined" references, because "[i]f examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent"

In re Alton

Holding that when the examiner alleges that the claimed embodiment is outside the scope of the specification, he "need only establish this fact to make out a prima facie case"

Section 112 - Specification

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Section 102 - Conditions for patentability; novelty

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

Section 6 - Patent Trial and Appeal Board

Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

Section 134 - Appeal to the Patent Trial and Appeal Board