Appeal No. 96-2192
Application 08/306,856
the top of page 4 of the Answer as well making reference to
the claims not having adequate support in the disclosed
invention in the paragraph bridging pages 6 and 7 of the
Answer.
The examiner’s reasoning for lack of "support" for the
claimed invention implicitly refers to the written description
requirement of 35 U.S.C. § 112, first paragraph. In re
Higbee, 527 F.2d 1405, 1406, 188 USPQ 488, 489 (CCPA 1976).
The test to be applied under the written description
portion of 35 U.S.C. § 112, first paragraph, is whether the
disclosure of the application as originally filed reasonably
conveys to the artisan that the inventors had possession at
that time of later claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117, reh’g
denied (Fed. Cir.
July 8, 1991) and reh’g en banc denied (Fed. Cir. July 29,
1991).
The present independent claims 30 and 31 were not
initially filed claims. We do, however, observe that
originally filed claim 17 related the blocking element to a
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