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

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

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]{.underline}, PLAGER, [Senior Circuit
Judge]{.underline}, and LINN, [Circuit Judge]{.underline}.

LINN, [Circuit Judge]{.underline}.

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]{.underline},
Inter. No. 104,832, Paper 69 (Bd. Pat. App. & Inter. May 23, 2003)
("[Reconsideration Decision]{.underline}"); [Bilstad v.
Wakalopulos]{.underline}, Inter. No. 104,832, Paper 62 (Bd. Pat. App. &
Inter. Mar. 31, 2003) ("[Original Decision]{.underline}"). 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]{.underline} 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]{.underline}, 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.]{.underline} 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.]{.underline} 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.]{.underline} 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]{.underline}
[Reconsideration Decision]{.underline}, 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.]{.underline} 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.]{.underline} 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.]{.underline} at 7.

Bilstad timely appealed the Board's [Original Decision]{.underline} and
[Reconsideration Decision]{.underline} 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]{.underline}, 999 F.2d 517, 519 n.2, 522 (Fed. Cir. 1993). As we
explained in [Kubota]{.underline}, 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.]{.underline} 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.]{.underline} 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]{.underline} [Kubota]{.underline},
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]{.underline}, 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]{.underline}, 317 F.3d 1334, 1343
(Fed. Cir. 2003); [see also]{.underline} [In re Gartside]{.underline},
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]{.underline}, 258 F.3d 1379, 1384 (Fed. Cir.
2001) (quoting [Consol. Edison Co. v. NLRB]{.underline}, 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]{.underline}, 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.]{.underline}; [Abrutyn v.
Giovanniello]{.underline}, 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]{.underline}, 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.]{.underline} at 24. Specifically,
the Board noted that [Webster's Third New International
Dictionary]{.underline} included multiple definitions of "plurality,"
including "'the state of being plural,'" "'the state of being
numerous,'" and "'a large number or quantity: MULTITUDE.'"
[Id.]{.underline} at 24 (quoting [Webster's Third New International
Dictionary]{.underline} 1745 (Philip Babcock Gove, Ph. D. ed. 1993)
("[Webster's]{.underline}")). 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]{.underline}, 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]{.underline}, 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.]{.underline}, 334 F.3d 1294, 1300 (Fed. Cir. 2003) (citing [Tex.
Digital Sys. Inc. v. Telegenix, Inc.]{.underline}, 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]{.underline}, 158 F.3d 1243, 1250 (Fed. Cir. 1998);
[see also]{.underline} [Tex. Digital]{.underline}, 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]{.underline} [Brookhill-Wilk]{.underline}, 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]{.underline} [Teleflex, Inc. v. Ficosa N. Am.
Corp.]{.underline}, 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]{.underline}, 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]{.underline} [re]{.underline}
[Smythe]{.underline}, 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]{.underline}
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]{.underline} 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]{.underline} 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.]{.underline} at 1383. Similarly, in [In re Rasmussen]{.underline},
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.]{.underline} The court stated that "one
skilled in the art who read Rasmussen's specification would understand
that it is unimportant [how]{.underline} the layers are adhered, so long
as they are adhered." [Id.]{.underline} 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.]{.underline}, 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.]{.underline} 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.]{.underline} 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.]{.underline}
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.]{.underline}:

> Claim 1 was properly rejected because it [recited]{.underline} 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]{.underline} [Lampi Corp. v. Am. Power Prods., Inc.]{.underline},
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]{.underline}, 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.]{.underline} at
1352-53. This court then distinguished [In re Smythe]{.underline} by
explaining that the Board properly found that this particular field was
unpredictable. "Unlike the circumstances [In re Smythe]{.underline}
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.]{.underline} at 1355
(quoting [In re Smythe]{.underline}, 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.]{.underline},
156 F.3d 1154 (Fed. Cir. 1998). In [Tronzo]{.underline}, 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]{.underline}
conical shaped cups and nothing broader." [Id.]{.underline} 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]{.underline}, 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]{.underline}. [Original Decision]{.underline}, slip op. at
24-25. However, the Board failed to recognize how [Tronzo]{.underline}
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]{.underline} [In re Curtis]{.underline},
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]{.underline}, 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]{.underline}, 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]{.underline}.

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]{.underline}

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]{.underline}, 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.