In Bilstad v. Wakalopulos (Fed. Cir., Oct. 7, 2004), the court considered whether a specification disclosing mechanical manipulation in only a small number of directions could support a genus count for "manipulating objects in a plurality of directions" where the term "plurality" had been properly construed in light of the specification and Webster's Dictionary as "relating to or consisting of or containing more than one, the state of being numerous, and a large number or quantity."
The court concluded that the application need not describe every embodiment within the range of two to infinity in order to support the count. Only if the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members (i.e., only if the art is unpredictable), would the disclosure of more directional species be necessary to adequately show possession of the entire genus. "In the mechanical world -- a fairly predictable field -- it is wholly conceivable that manipulation in a small number of directions may convey to one skilled in the art that Bilstad indeed described manipulation in a plurality of directions," wrote Circuit Judge Linn.
Under the circumstances of this case, the Board erred in failing to consider the knowledge of one skilled in the art and the level of predictability in the field when it concluded that disclosure of a small number of directions was insufficient to support the manipulation of objects in a range bounded by two and infinity. The Federal Circuit therefore vacated the Board's decision with respect to the written description requirement and remanded the case for reconsideration under the proper test for support of the count.
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