
United States Court of Appeals for the Federal Circuit


                                               03-1528
                                      (Interference No. 104,832)



                               ARNOLD C. BILSTAD, BRADLEY H. BUCHANAN,
                               ALAN W. MARTILLA, and ARCHIE WOODWORTH,

                                             Appellants,

                                                  v.


                              GEORGE WAKALOPULOS and EDUARDO R. URGILES,

                                             Appellees.





      Keith V. Rockey,  Wallenstein,  Wagner  &  Rockey,  Ltd.,  of  Chicago,  Illinois,  argued  for
appellants.  With him on the brief were Daniel N. Christus and Robert W. Diehl.  Of  counsel  on  the
brief were Mark J.  Buonaiuto,  Assistant  General  Counsel;  and  Francis  C.M.  Kowalik,  Corporate
Counsel,  Law Department, Baxter International Inc., of Deerfield, Illinois.

      Douglas E. Olson, Paul Hastings Janofsky & Walker, LLP, of San Diego,  California,  argued  for
appellees.  With him on the brief were Howard S. Wisnia, John E. Peterson, and Elizabeth L. Brann.


Appealed from:  United States Patent and Trademark Office
                 Board of Patent Appeals and Interferences











United States Court of Appeals for the Federal Circuit



                                               03-1528

                       ARNOLD C. BILSTAD, BRADLEY H. BUCHANAN, ALAN W. MARTILLA
                                         and ARCHIE WOODWORTH

                                             Appellants,

                                                  v.


                              GEORGE WAKALOPULOS and EDUARDO R. URGILES,

                                             Appellees.

                                     ___________________________

                                      DECIDED:  October 7, 2004
                                     ___________________________

Before BRYSON, Circuit Judge, PLAGER, Senior Circuit Judge, and LINN, Circuit Judge.

LINN, Circuit Judge.

      Arnold C. Bilstad, Bradley H. Buchanan, Alan W. Martilla, and  Archie  Woodworth  (collectively
“Bilstad”) appeal from:  (1) a March 31, 2003 decision of the  United  States  Patent  and  Trademark
Office Board of Patent Appeals and Interferences (“Board”) and (2) a May 23,  2003  decision  of  the
Board on reconsideration awarding judgment in Interference No.  104,832  to  George  Wakalopulos  and
Eduardo R. Urgiles (collectively “Wakalopulos”).  Bilstad v. Wakalopulos, Inter. No.  104,832,  Paper
69 (Bd. Pat. App. & Inter. May  23,  2003)  (“Reconsideration  Decision”);  Bilstad  v.  Wakalopulos,
Inter. No. 104,832, Paper 62 (Bd. Pat. App. & Inter. Mar. 31, 2003) (“Original  Decision”).   Because
the Board’s claim construction was correct, and because the Board did not  abuse  its  discretion  in
dismissing Bilstad’s motion for leave to belatedly add additional claims  to  the  count,  we  affirm
those portions of the Board’s decision.  However, because the  Board  failed  to  apply  the  correct
standard in deciding whether Bilstad’s disclosure supported the count, we vacate that portion of  the
Board’s decision and remand.
                                            I.  BACKGROUND
      This interference was declared on March 30, 2002 between an application of Bilstad, Application
Serial No. 09/294,964, filed April 20, 1999, and a patent of Wakalopulos, U.S. Patent  No.  6,140,657
(“the ’657 patent”), filed March 17, 1999 and issued October 31, 2000.  The  claimed  subject  matter
relates to an apparatus for sterilizing three-dimensional objects using  ionizing  radiation  without
affecting the target objects in a deleterious manner.
      Bilstad provoked the interference by copying claims 1, 5-8, 11, and 16-17 of  the  ’657  patent
into Bilstad’s pending application as claims 57-64, as  well  as  adding  a  paraphrased  version  of
Wakalopulos’s claim 18 as claim 65.  The Board declared the interference, designating claim 1 of  the
’657 patent as the only count and identifying Bilstad claims 57-65 as  corresponding  to  the  count.
The count reads as follows, with the disputed portion underlined:
      A sterilization apparatus comprising,
           an electron beam tube having a window permitting emergence of an electron beam from  said
      tube into an ambient gaseous environment while preserving a vacuum environment in the tube, the
      electron beam having a trajectory within a plasma cloud defining a reactive  volume  stimulated
      by interaction of the electron beam with the ambient environment, with a beam energy less  than
      100 kV at the target, and
           a moveable member manipulating objects in a plurality of directions within  the  reactive
      volume wherein the manipulated objects are sterilized.

      In the “Notice Declaring Interference” issued by the Patent and  Trademark  Office,  the  Board
included  a  standing  order  that  required,  among  other  things,  “a  conference  call   to   the
administrative patent judge” before the filing of any contested miscellaneous motion.   Subsequently,
the Administrative Patent Judge designated to  handle  the  interference  entered  an  order  setting
deadlines for the filing of preliminary motions as prescribed by 37  C.F.R.  § 1.636(a).   The  order
established a “preliminary motion period” for filing motions under 37 C.F.R.  § 1.633  (“Rule  633”),
paragraphs (a) through (h), and a “Rule 633(i) period” for filing motions under  paragraphs  (i)  and
(j) of Rule 633.
      During the preliminary motion period, Wakalopulos filed Preliminary Motion 1 under Rule 633(a),
which allows a movant to seek judgment based on an assertion that an opponent’s claim, designated  to
an  interference  count,  is  not  patentable  to  that  opponent.   37  C.F.R.  § 1.633(a)   (2003).
Wakalopulos asserted, in its preliminary motion, that the  involved  claims  of  the  Bilstad  patent
lacked adequate written description support under 35 U.S.C. § 112, ¶ 1 for the  claim  limitation  “a
moveable member manipulating objects in a plurality of directions within the  reactive  volume.”   In
addition to its opposition to Wakalopulos’s motion for judgment, Bilstad sought an extension  of  the
Rule 633(i) period.  Under Rule 633(i), an opponent to a motion filed under Rule 633(a) is  permitted
to file a preliminary motion under Rule 633(c)  to  add  or  amend  claims  to  address  the  alleged
unpatentability of the claims.  37 C.F.R. § 1.633(i) (2003).  The Board denied Bilstad’s request  for
an extension of time, and Bilstad did not file a timely motion under Rule 633(i).
      On September 27, 2002, the Board conducted a hearing on Wakalopulos’s preliminary  motion  and,
on March 31, 2003, granted judgment in favor of Wakalopulos.  Original Decision, slip op. at 28.   In
that judgment, the Board concluded that all of Bilstad’s involved claims were unpatentable  under  35
U.S.C. § 112 for lack of written description.  In reaching this conclusion, the Board focused on  the
term “plurality,” which it construed to “connote[] an  indefinite  numerical  range.   The  range  is
bounded by two at the lower end and unbounded or infinite at the upper end.”  Id. at 24.   The  Board
also stated that “‘plurality’ is a generic word which encompasses within its meaning  any  number  at
least two or greater.”  Id.  Based on Bilstad’s written description,  however,  the  Board  concluded
that Bilstad described manipulating objects “in a small number of directions,”  and  that  “Bilstad’s
original specification does not provide a written description of manipulations in a large  number  of
directions.”  Id.  The Board thus found the written  description  lacking  and  granted  judgment  in
Wakalopulos’s favor.
      Bilstad sought reconsideration of the Board’s decision, arguing that:  (1) the Board  erred  in
construing “plurality” as a range; (2) Bilstad was prejudiced because the Board adopted a  definition
of “plurality” that neither  party  proffered;  and  (3)  given  the  Board’s  finding  that  Bilstad
discloses a member capable of manipulating objects  in  a  small  number  of  directions,  “the  mere
disclosure of movement in two or three directions would be  adequate . . . support”  for  “plurality”
under § 112, ¶ 1.  At the same time, Bilstad filed a miscellaneous motion under 37 C.F.R.  § 1.635[1]
seeking leave to belatedly add to the Bilstad application claims designated as corresponding  to  the
count.  The motion essentially sought leave to file a Rule  633(i)  motion  after  the  deadline  for
filing such motions had passed.  Along with the Rule 635 motion, Bilstad filed Motion 5 which  sought
to add to the count a number of claims not including the term “plurality.”
      In  its  reconsideration  decision  of  May  23,  2003,  the  Board  addressed  both  Bilstad’s
reconsideration motion and  the  miscellaneous  motion  under  37  C.F.R.  § 1.635.   The  Board  was
unpersuaded by Bilstad’s arguments regarding the  construction  of  “plurality”  and  the  extent  of
support for the term in Bilstad’s written description.  See generally Reconsideration Decision,  slip
op. at 7-14.    As to Bilstad’s Rule 635 motion, the Board noted that Bilstad failed  to  follow  the
procedure in the standing order requiring a conference call prior to the filing of such motions.   As
such,  the  Board  dismissed  Bilstad’s  miscellaneous  motion  and  returned  as  unauthorized   the
accompanying motion to add claims.  Id. at 4 n.1.  Because the Board noted that “the  matters  raised
in the miscellaneous motion appear also to  have  been  raised  as  part  of  Bilstad’s  request  for
reconsideration,” the Board addressed, to that extent, the merits  of  Bilstad’s  motion.   Id.   The
Board concluded that “Bilstad’s current position is the result of choices made by Bilstad”  and  that
“Bilstad was not denied the opportunity to file a motion to amend or add  claims  or  to  change  the
count,” but rather “Bilstad did not take advantage of the opportunity afforded.”  Id. at 7.
      Bilstad timely appealed the Board’s Original Decision  and  Reconsideration  Decision  to  this
court.  We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
                                           II.  DISCUSSION
                                        A.  Standard of Review
      Before the Board, the burden of establishing by a preponderance of the evidence that  Bilstad’s
application lacked sufficient disclosure under 35 U.S.C. § 112, ¶ 1 fell on  Wakalopulos  as  movant.
Kubota v. Shibuya, 999 F.2d 517, 519 n.2, 522 (Fed. Cir. 1993).  As we  explained  in  Kubota,  under
the old interference rules, “a party copying claims for the  purpose  of  provoking  an  interference
bore the burden of proving by clear and convincing evidence that it  had  the  ‘right  to  make’  the
claim.”  Id. at 521.  However, with respect to the new interference rules—at issue  in  this  case—we
said:
      It seems to us that, while the burden initially may  be  on  a  party  seeking  to  provoke  an
      interference, or seeking to obtain entitlement to a priority date,  once  an  interference  has
      been declared and a party seeks to change the status of the parties by motion,  the  burden  is
      then on the movant under the new rules, rather than  on  the  party  originally  provoking  the
      interference or obtaining entitlement.

Id. at 522.  The logic behind this rule is based, in part, on 37  C.F.R.  § 1.655(a),  which  states,
“The burden of showing that an  interlocutory  order  should  be  modified  shall  be  on  the  party
attacking the order.”  The declaration of interference is an interlocutory order that is presumed  to
be correct.  See Kubota, 999 F.2d at  520-21  (adopting  the  Commissioner’s  interpretation  that  a
declaration of interference is an  interlocutory  order  presumed  to  be  correct  under  37  C.F.R.
§ 1.655(a)).  Thus, once Bilstad convinced the examiner that he  was  entitled  to  an  interference,
that decision was presumed to be correct, and Wakalopulos bore the burden  of  proving  that  it  was
incorrect by a preponderance of the evidence.
      Interpretation of an interference count is a question of law,  reviewed  de  novo.   Credle  v.
Bond, 25 F.3d 1566, 1571 (Fed.  Cir.  1994).   Whether  an  application  complies  with  the  written
description requirement of 35 U.S.C. § 112, ¶ 1 is a  question  of  fact,  reviewed  for  substantial
evidence.  Singh v. Brake, 317 F.3d 1334, 1343 (Fed. Cir. 2003); see also In re  Gartside,  203  F.3d
1305, 1315 (Fed. Cir. 2000)  (adopting  the  substantial  evidence  standard  of  the  Administrative
Procedure Act in reviewing factual findings of the Board).  Substantial  evidence  is  merely  “‘such
relevant evidence as a reasonable mind might accept as adequate to support  a  conclusion.’”   In  re
Zurko, 258 F.3d 1379, 1384 (Fed. Cir. 2001) (quoting Consol. Edison Co. v. NLRB, 305  U.S.  197,  229
(1938)).
      The Board’s decision, denying leave for Bilstad to  file  a  belated  motion  under  37  C.F.R.
§ 1.633(i), is reviewed for an abuse of discretion.  Rapoport v. Dement, 254 F.3d  1053,  1058  (Fed.
Cir. 2001).  An abuse of discretion  is  found  if  the  decision:   “(1)  is  clearly  unreasonable,
arbitrary, or fanciful; (2) is based on  an  erroneous  conclusion  of  law;  (3)  rests  on  clearly
erroneous fact finding; or (4) involves a record that contains no evidence on which the  Board  could
rationally base its decision.”  Id.; Abrutyn v.  Giovanniello,  15  F.3d  1048,  1050-51  (Fed.  Cir.
1994).
                                       B.  Section 112 Analysis
      Bilstad argues that the Board committed two errors in  concluding  that  Bilstad’s  application
provided insufficient written description to support the count, namely:   (1) the  Board  erroneously
construed the term “plurality” as used in the count,  and  (2) the  Board  erred  in  insisting  that
Bilstad’s application must describe every embodiment within  the  range  construction  given  by  the
Board to the term “plurality.”  We consider each of these arguments in turn.
                                        1.  Count Construction
      Bilstad first argues that the Board’s decision must be reversed because its claim  construction
of the term “plurality” is erroneous.  In particular, Bilstad argues that the Board’s combination  of
multiple dictionary definitions to arrive at a range is inconsistent with precedent.[2]   Wakalopulos
argues instead that the Board properly construed “plurality” because the written description  of  the
’657 patent does support a broad construction and the  Board’s  analysis  is  fully  consistent  with
precedent.
      Before  the  Board,  Bilstad  and  Wakalopulos  offered  competing  definitions  of  the   term
“plurality.”  Wakalopulos argued that “plurality” means “a large number; multitude,” whereas  Bilstad
argued that “plurality” simply means “two or more  items.”   The  Board  began  by  noting  that  the
parties did not argue that “plurality” had any special meaning in the art, nor did the parties  argue
that Bilstad’s specification provided a definition of “plurality.”  Original Decision,  slip  op.  at
23.  The Board then consulted a dictionary to ascertain the ordinary meaning of “plurality”  and  was
confronted with multiple  definitions,  including  those  proffered  by  the  parties.   Id.  at  24.
Specifically, the Board noted that Webster’s Third New  International  Dictionary  included  multiple
definitions  of  “plurality,”  including  “‘the  state  of  being  plural,’”  “‘the  state  of  being
numerous,’” and “‘a large number or quantity: MULTITUDE.’”  Id. at 24 (quoting  Webster’s  Third  New
International Dictionary 1745 (Philip Babcock Gove, Ph. D. ed. 1993) (“Webster’s”)).  The Board  also
included the definition of “plural” from the same dictionary:  “‘relating  to  or  consisting  of  or
containing more than one.’”  The Board went on to state:
           As is apparent  from  the  Webster’s  definitions,  the  ordinary  meaning  of  plurality
      encompasses both parties’ proposed meanings.   Therefore,  we  do  not  accept  either  party’s
      proposed definitions because they are incomplete.   Two  may  properly  be  referred  to  as  a
      plurality and so may a large number.  Thus, “plurality” connotes an indefinite numerical range.
       The range is bounded by two . . . and . . . infinit[y] . . . .

Original Decision, slip op. at 24.

      We see no error in the Board’s construction of “plurality.”   When  confronted  with  competing
arguments, the Board looked to a dictionary to ascertain the ordinary meaning of “plurality.”   Here,
the dictionary shows ordinary meanings of “plurality,” including:  “relating to or consisting  of  or
containing more than one,” “the  state  of  being  numerous,”  and  “a  large  number  or  quantity.”
Webster’s, at 1745.  The Board then looked to the written description  for  context  in  ascertaining
the meaning of “plurality,” determined  that  the  dictionary  definitions  and  both  Bilstad’s  and
Wakalopulos’s proffered definitions were consistent with  Bilstad’s  disclosure,  and  construed  the
term to encompass all of those  meanings.   As  we  have  stated,  “[i]f  more  than  one  dictionary
definition is consistent with the use of the words in the intrinsic record, the claim  terms  may  be
construed to encompass all consistent meanings.”  Brookhill-Wilk 1, LLC v. Intuitive Surgical,  Inc.,
334 F.3d 1294, 1300 (Fed. Cir. 2003) (citing Tex. Digital Sys. Inc.  v.  Telegenix,  Inc.,  308  F.3d
1193, 1203 (Fed. Cir. 2002)).  “[W]here there are several common  meanings  for  a  claim  term,  the
patent disclosure serves to point away from the improper meanings and  toward  the  proper  meaning.”
Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1250 (Fed.  Cir.  1998);  see  also  Tex.
Digital, 308 F.3d at 1203.  None of these definitions is inconsistent with the Bilstad disclosure  or
the Wakalopulos disclosure.
      With respect to the Bilstad disclosure, the Board found that Bilstad disclosed manipulation  in
a small number of directions.  Thus, the Bilstad disclosure is entirely consistent with  the  meaning
of “plurality” as “relating to or consisting of or containing more than one.”  With respect  to  “the
state of being numerous” and “a large number or quantity,” we see  nothing  in  Bilstad’s  disclosure
that disclaims, disavows, or is inconsistent with such  definitions  of  plurality.   See  Brookhill-
Wilk, 334 F.3d at 1300.  Because all of the definitions are consistent with the  Bilstad  disclosure,
the term “plurality” when construed in view of the Bilstad disclosure is entitled to the full  extent
of its ordinary meaning.
      Similarly, each of the ordinary meanings of “plurality” is consistent with  the  disclosure  of
the ’657 patent.  First, nothing in the written description of  the  ’657  patent  defines  the  term
“plurality,” nor is  there  any  disclaimer  or  disavowal  of  the  ordinary  meaning  of  the  term
“plurality.”  See Teleflex, Inc. v. Ficosa N. Am. Corp.,  299  F.3d  1313,  1327  (Fed.  Cir.  2002).
Second, although, as Bilstad argues, Wakalopulos uses the term  “plurality”  to  describe  a  set  of
three items, this is simply one use of the term in a particular context.  This single use alone  does
not limit the term.  Third, the Wakalopulos written description, in Figure  3  and  its  accompanying
text, illustrates an embodiment wherein a glove box arm is provided to allow  a  user  to  place  his
hand in and pick up and manipulate an object to be sterilized.  This description is  consistent  with
a construction of “plurality” that includes everything from “relating to more than one” to  “a  large
number or quantity.”  Thus, the Wakalopulos written description does not limit the  ordinary  meaning
of “plurality.”  We therefore conclude that “plurality” encompasses all of the relevant  definitions;
namely, relating to or consisting of or containing more than one, the state of being numerous, and  a
large number or quantity.
      Bilstad, however,  argues  that  the  Board  improperly  incorporated  the  several  dictionary
definitions into a range from two to infinity.  While it is common to consider the  full  meaning  of
“plurality” as any number greater than one, the Board’s definition does little more than  incorporate
the several distinct definitions into a single one covering the  entire  scope  of  “plurality.”   In
combining the definitions into a single one, the Board did not change the scope of the term or  alter
the ordinary meanings in any significant way.  Thus, we affirm the Board’s construction of  the  term
“plurality.”
      Bilstad’s other arguments regarding alleged claim construction errors made by  the  Board  have
been considered and are not deemed persuasive.
                                       2.  Written Description
      Bilstad next argues that the Board erred in insisting that Bilstad’s application must  describe
every embodiment within the range of two to infinity to support the count, copied by  Bilstad,  under
the Board’s construction of the term “plurality.”
      The question requires consideration of whether the Bilstad disclosure,  as  filed,  “reasonably
conveys to a person skilled in the art that the  inventor  had  possession  of  the  claimed  subject
matter at the time of the earlier filing date.”  Eiselstein v. Frank, 52 F.3d 1035, 1039  (Fed.  Cir.
1995).
      With particular relevance to this case, several cases have  considered  the  issue  of  written
description support for an added genus claim when only a species is disclosed.  In In re Smythe,  our
predecessor court said, “We cannot agree with the broad proposition . . .  that in every  case  where
the description of the invention in the specification is narrower than that in the  claim  there  has
been a failure to fulfill the description requirement in section 112.”  480  F.2d  1376,  1382  (CCPA
1973).  Smythe involved the question of whether a disclosure of air  as  a  segmentizing  medium  was
sufficient written description to support the broader claim language “inert fluid,” though  the  term
“fluid” did not appear in the written description.  The court concluded,
           We believe that the use of an inert fluid broadly in this invention would naturally occur
      to one skilled in the art reading the description  of  the  use  of  air  or  other  gas  as  a
      segmentizing  medium  to  separate  the  liquid  samples.   While  fluid  is  a  broader  term,
      encompassing liquids, as noted by the solicitor,  the  specification  clearly  conveys  to  one
      skilled in the art that in this invention the characteristics of a  fluid  are  what  make  the
      segmentizing medium work in this invention.
           This is not a case where there is any unpredictability such that appellants’  description
      of air or other inert gas would not convey to one skilled in the art knowledge that  appellants
      invented an analysis system with a fluid segmentizing medium.

Id. at 1383.  Similarly, in In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981), our  predecessor  court
considered whether a written description disclosing a single method of  applying  adhesive  supported
the amended claim  containing  the  broad  language  “adheringly  applying.”   The  court  explained:
“[T]hat a claim may be broader than the specific  embodiment  disclosed  in  a  specification  is  in
itself of no moment.”  Id.  The court stated that “one  skilled  in  the  art  who  read  Rasmussen’s
specification would understand that it is unimportant how the layers are adhered,  so  long  as  they
are adhered.”  Id.  Thus, our predecessor court  recognized  that  disclosure  of  a  single  species
within a genus may be enough support for a claim directed to the genus.
      In Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575-77 (Fed. Cir. 1985), this  court
affirmed a trial court’s finding that several open-ended ranges were supported by  a  parent  written
description.  In particular, this court affirmed the trial court’s  conclusion  that  the  limitation
“protein content of at least about that of solvent extracted  soybean  meal”  was  supported  by  the
written description disclosing solvent extracted soybean meal with a protein content  of  about  50%.
Id. at 1575-76.  Although open-ended and although the  parent  disclosure  did  not  teach  materials
having greater than 50% protein content, this court said, “The trial  court  found  that  the  parent
disclosure does support the claim language, based on the 1964 disclosure and on consideration of  the
knowledge possessed by those skilled in the art of extrusion of both  farinaceous  and  proteinaceous
vegetable materials in 1964.”  Id. at 1576.  We then noted that soybean meals with  protein  contents
above 50% were readily available commodities in 1964.  We concluded that “the court did  not  clearly
err in determining that the parent’s disclosure  adequately  supports  the  protein  content  of  the
claims in issue.”  Id. at 1576.
      Thus, this court has continued to apply the rule that disclosure of a species may be sufficient
written description support for a later claimed genus including that species.   As  we  explained  in
Ethicon Endo-Surgery, Inc. v. United States Surgical Corp.:
           Claim 1 was properly rejected because it  recited  an  element  not  supported  by  Fox’s
      disclosure, i.e., a lockout “on  the  stapler.”   It  does  not  follow,  however,  that  Fox’s
      disclosure could not support claims sufficiently  broad  to  read  on  a  lockout  off  of  the
      cartridge.  If Fox did not consider the precise location of the lockout to be an element of his
      invention, he was free to draft claim 24 broadly (within the limits imposed by the  prior  art)
      to exclude the lockout’s exact location as a limitation of the claimed invention.  Such a claim
      would not be unsupported by the specification even though it would be  literally  infringed  by
      undisclosed embodiments.

93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (citations omitted);  see  also  Lampi  Corp.  v.  Am.  Power
Prods., Inc., 228 F.3d 1365, 1377-78 (Fed. Cir. 2000) (affirming the district  court’s  finding  that
disclosure of only identical half-shells was sufficient  written  description  support  for  a  claim
encompassing both identical and non-identical half-shells).
      There are, however, exceptions to the general  rule  that  disclosure  of  a  species  provides
sufficient written description support for a later filed claim directed to the genus.   For  example,
in the recent case of In re Curtis, 354 F.3d 1347 (Fed. Cir. 2004), this court affirmed  the  Board’s
rejection of claims directed  to  dental  floss  for  failure  to  satisfy  the  written  description
requirement.  The relevant parent application only disclosed  the  use  of  microcrystalline  wax  as
adhered  to  polytetrafluoroethylene  floss.   However,  the  claims  in   the   continuation-in-part
application were more  broadly  drawn  to  the  genus  of  friction  enhancing  coatings  applied  to
polytetrafluoroethylene floss.  This court explained that the evidence relied  on  by  the  Board  in
determining that the later claims were not entitled to priority to the parent  application  indicated
that at the time  the  parent  application  was  filed  no  one  knew  of  any  material  other  than
microcrystalline wax that would adhere to the polytetrafluoroethylene floss.  Id. at  1352-53.   This
court then distinguished In re  Smythe  by  explaining  that  the  Board  properly  found  that  this
particular field was unpredictable.  “Unlike the circumstances In re Smythe  presented,  the  instant
facts present a case in which there  is  ‘unpredictability  in  performance  of  certain  species  or
subcombinations other than those specifically enumerated.’”  Id. at 1355 (quoting In re  Smythe,  480
F.2d at 1383).  Thus, unpredictability in  the  particular  field  may  warrant  closer  scrutiny  of
whether disclosure of a species is sufficient to describe a genus.
      The distinction in these cases is based upon what would be  reasonably  conveyed  to  a  person
skilled in the art at the time of the original disclosure.  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.,  if  the  art  is  unpredictable,  then
disclosure of more species is necessary to adequately show possession of the entire genus.
      Another exception is presented in Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir.  1998).   In
Tronzo, this court held that substantial evidence did not support the jury’s verdict that  claims  to
a hip prosthesis of generic shape were supported by a parent disclosing  only  a  trapezoidal  shape.
We said, “Instead of suggesting that the ’589 patent [the parent] encompasses additional shapes,  the
specification specifically distinguishes the prior art as inferior and touts the  advantages  of  the
conical shape of the ’589 cup.  Such statements make  clear  that  the  ’589  patent  discloses  only
conical shaped cups and nothing broader.”  Id. at 1159 (citation omitted).
      In analyzing the written description question in this case, the Board  made  much  of  how  the
“written description must actually describe the  later-claimed  invention,  not  just  enable  it  or
provide information to render it obvious.”  Original Decision, slip op. at 25.   However,  the  Board
never truly discussed the understandings of persons skilled in the art and whether Bilstad’s  written
description would reasonably convey to a person skilled in the art that  Bilstad  had  possession  of
the claimed subject matter at the time of filing.  Specifically, the Board made no  findings  on  the
unpredictability in the art or on whether Bilstad’s disclosure expressly disclaimed  manipulation  in
a larger number of directions than the “small number” that the Board  found  his  disclosure  taught.
The Board relied heavily on Tronzo.  Original Decision,  slip  op.  at  24-25.   However,  the  Board
failed to recognize how Tronzo fits within  the  spectrum  of  cases  involving  written  description
support for a genus when only one or more species are disclosed.  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.  See In re Curtis, 354 F.3d at 1354-55 (holding that an application would  not  have  put
persons skilled in the art on notice of the broad scope claimed by  the  applicant,  where  there  is
“‘unpredictability  in  performance  of  certain  species  or  subcombinations   other   than   those
specifically enumerated’” (quoting In re Smythe, 480 F.2d at 1383)).   But  the  record  contains  no
analysis of what one skilled in the art would have understood from  the  Bilstad  disclosure  or  the
degree of predictability of technical variations  in  this  field  of  art.   The  Board  noted  that
Bilstad’s written description disclosed manipulating objects in only a  small  number  of  directions
and concluded that this was insufficient to support the manipulation of objects in  a  range  bounded
by two and infinity.  Original Decision, slip op. at 24.   Under  the  circumstances  of  this  case,
however, the Board erred in failing to consider the knowledge of one  skilled  in  the  art  and  the
level of predictability in the field.
      Even though the appeal is properly before us, a resolution of the question of whether Bilstad’s
disclosure of manipulation in a small number of  directions  would  reasonably  convey  to  a  person
skilled in the relevant art that Bilstad had possession of manipulation in a plurality of  directions
as of his filing date requires fact findings this court is not permitted to  make.   Accordingly,  we
vacate the Board’s decision with respect to  the  written  description  requirement  and  remand  for
reconsideration under the proper test for support of the count.
                                C.  Denial of Bilstad’s § 1.635 Motion
      Bilstad also argues that the Board erred in rejecting Bilstad’s motion  under  § 1.635  seeking
permission to belatedly file its motion under 37 C.F.R. § 1.633(i).  In  particular,  Bilstad  argues
that the Board “assured Bilstad that it would have  every  opportunity  to  file  those  motions”  on
denying Bilstad’s request for an extension of time, but then prejudiced Bilstad by refusing later  to
entertain Bilstad’s belated motion under § 1.633(i).  Wakalopulos  argues  that  the  Board  did  not
abuse its discretion in denying Bilstad’s motion  because  Bilstad’s  motion  under  § 1.635  seeking
leave to file the § 1.633(i) motion out of time did  not  comply  with  the  Board’s  standing  order
requiring a conference call with  the  Administrative  Patent  Judge  prior  to  the  filing  of  any
miscellaneous motion and because the Board provided Bilstad no assurances that it would be  permitted
to file a Rule 633(i) motion out of time.  We agree that Bilstad failed to comply  with  the  Board’s
standing order requiring a conference call with the Administrative Patent Judge prior to  filing  the
miscellaneous motion under Rule 635.  Bilstad argues that the call had already  been  made  and  that
the Administrative Patent Judge had granted permission to file the motion, citing the portion of  the
Administrative  Patent  Judge’s  order  denying  his  original   motion   without   prejudice.    The
Administrative Patent Judge, however, did not grant Bilstad permission to file the late  motion.   He
simply denied Bilstad’s original motion without prejudice.  Thus,  Bilstad  was  starting  over  when
filing the Rule 635 motion, and Bilstad had to comply  with  the  Board’s  standing  order  regarding
motions under Rule 635.  Because the Board did not abuse its discretion in rejecting  Bilstad’s  Rule
635 motion seeking permission to file a belated Rule 633(i) motion, we affirm  that  portion  of  the
Board’s Reconsideration Decision.
                                           III.  CONCLUSION
      Because the Board did not abuse its discretion in denying  Bilstad’s  motion  to  file  a  Rule
633(i) motion out of time, we affirm that portion of  the  Board’s  decision.   We  also  affirm  the
Board’s construction of “plurality.”  However, because the Board  failed  to  apply  the  appropriate
standard in its analysis of whether Bilstad’s application included sufficient written description  to
support the count under 35 U.S.C. § 112, ¶ 1, we vacate the Board’s  grant  of  Wakalopulos’s  motion
for judgment and remand to the Board for further proceedings consistent with this opinion.
                           AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED
                                              IV.  COSTS
      No costs.
-----------------------
      [1]   37 C.F.R. § 1.635 recites that “[a] party seeking entry  of  an  order  relating  to  any
matter other than a matter which may be raised under § 1.633 . .  .  may  file  a  motion  requesting
entry of the order.”  37 C.F.R. § 1.635 (2004).
      [2]   Bilstad also argues that the Board erred in construing the term “plurality”  in  view  of
Bilstad’s disclosure, instead of looking to the ’657 patent.  Bilstad cites In  re  Spina,  975  F.2d
854 (Fed. Cir. 1992), for the proposition that a count  is  construed  in  view  of  the  originating
disclosure.  Wakalopulos concedes that the Board erred in this respect.   Because  we  conclude  that
the construction of the term “plurality” is the same in view of either disclosure, we need not  reach
this issue.


