Appeal No. 95-2245
Application No. 08,011,563
original application disclosure as a whole must be considered
with the recognition that the claimed subject matter need not
be described in haec verba in the original disclosure to
satisfy the description requirement. See In re Wright, 866
F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989). Precisely how close
the original description must be to the claim language to
comply with the description requirement must be determined on
a case-by-case basis. The inquiry into whether the
description requirement is met is a question of fact. See In
re Wilder, supra.
Here, the examiner asserts that the claim language
“sintered titanium dioxide particles as a by-product” does not
appear in the original application disclosure. Contrary to
the examiner’s assertion, however, the specification as
originally filed describes (page 3) that:
sintered titanium dioxide particles, also known as
scrub solids have been found to be particularly
useful. These particles are used in the preparation
of titanium dioxide according to the chloride
process, if the reaction gases are to be cooled via
indirect heat exchange, in that the cooling area can
be maintained extensively free of unwanted coatings.
The particles, though a by-product in the
preparation of titanium dioxide, are believed
available from other processes and sources as well.
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