Appeal No. 1997-3919
Application 08/392,160
"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented the
processes including those limitations." Wertheim, 541 F.2d at
262, 191 USPQ at 96 citing In re Smythe, 480 F.2d 1376, 1382,
178 USPQ 279, 284 (CCPA 1973). Furthermore, the Federal
Circuit points out that "[i]t is not necessary that the
claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in
the art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983).
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