From 35 USC §
112:
a) In General.— The specification shall contain a
written description of the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same, and shall set forth the best mode
contemplated by the inventor or joint inventor of carrying out the
invention.
(b) Conclusion.— The specification shall conclude with one
or more claims particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the invention.
...
There's this thing called a specification, which will
include a written description "of the invention, and of the manner and process
of making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains" allowing someone
having ordinary skill in the art to implement.
There's this conclusion to
the specification comprised of one or more claims. You could rightly claim the
written description is required to teach a PHOSITA, what's at issue is whether
or not the ordinary practitioner needs to understand the claims.
We know
the written description limits claims that could otherwise be interpreted over
broadly. If the invention isn't described in the written description the claim
lacks enablement. You could also note that prior art by reference and ordinary
meaning without prior art are used to interpret claims based on the time the
patent is filed. A post filing re-issued prior art patent reference, a
non-patent prior art reference later amended or latter dictionary meaning can't
expand claims.
From this we get the CAFC deciding claims construction is a
matter of law, with the Supreme Court refusing to take up a countervailing
argument. All this says you can't tell what the invention actually is
authoritatively, although the entire specification limits the claim, without it
being adjudicated by one of a District Court, the PTAB, the CAFC or the Supreme
Court. A lawyer can of of course give you an opinion.
You would think that
a PHOSITA would be capable of determining whether or not a provided constructed
claim is supported by the written description or is otherwise indefinite based
on terms of art. Such a person may not be qualified to interpret limiting prior
art speaking directly to claims.
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