Knobbe Martens
May 21, 2018


Federal Circuit Summary

Before Reyna, Clevenger, and Wallach.  Appeal from the United States District Court for the District of Colorado

Summary:  Even in a simple mechanical case, a narrow disclosure in the specification of a priority application may not provide adequate written description support for broad, later-issued claims which claim priority to that application.

This appeal arises out of the District Court’s grant of summary judgment that the claims asserted by D Three Enterprises (“D Three”) could not claim priority to an earlier provisional application and that, in turn, the asserted claims were invalid.   The asserted claims were directed to mechanical assemblies that allow users to mount objects on a roof and seal the mounting location against water.  Most of the asserted claims did not recite the presence of a washer; however, the priority application disclosed only a single washerless embodiment.  The remaining claims recited a washer, but did not specify the location of the washer.  The priority application, however, disclosed only washers located above the flashing on the roof.

On appeal, D Three argued that District Court erred because a genuine issue of material fact existed regarding whether the priority application adequately disclosed the full scope of the claims.  In order to have written description support for a claimed genus, a representative number of species must be described such that a person having ordinary skill in the art can visualize the genus.  Though this is a question of fact, the Federal Circuit affirmed the District Court’s summary judgment ruling.  The Federal Circuit found that the priority application “in no way contemplates” any washerless embodiments other than the single example disclosed.  Similarly, the Federal Circuit stated that “[t]he lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal” to the claim of priority.  Accordingly, the Federal Circuit affirmed the District Court’s decision that the asserted claims lacked written description support to claim priority to the priority application.


Written by: Daniel A. Kamkar and Karen M. Cassidy

Edited by: Paul Stewart