U.S. Patent No. 8,061,359, directed to an endoscope to remove uterine tissue.
The patent claims priority to a PCT application with a nearly identical specification and same inventor (page 2). The claim recites a “first channel having a light guide permanently affixed therein” (page 2). To deal with an Examiner objection about the drawings not showing the claimed light guide, the specification was amended to relate a disclosed fiber optics bundle to the claimed light guide (page 4). The “fiber optics bundle” of the original specification and PCT application is a species of “light guide,” which was added to the specification of the patent (page 5). To be entitled to the PCT application filing date, the PCT application must disclose the claimed “light guide” (pages 6-7). Since a fiber optic cable is a type of light guide and light guides are well known in the art, substantial evidence supports that the PCT application conveys that the inventor had possession of a “light guide” (page 8). The light channel or viewing channel terminating at a lens on one end and a view tube/eyepiece on another end and a connection for a light source with the bundle support “the light guide” being affixed in the channel (pages 8-9). The Figures not showing the light guide, instead showing the channel, does not change this (pages 9-10).
Hindsight: The original application could have been drafted with the broader language as well as the specific. Providing genus terms and multiple species makes clear possession of the genus. Showing the claimed term in a drawing, while not required, may have more likely led to a more involved description of alternatives and may have avoided this dispute.