Appeal No. 1998-1660
Application No. 08/108,499
1555, 1560, 19 USPQ 2d 1111, 1114 (Fed. Cir. 1991). The
terminology “lack of support” has also been held to imply a
reliance on the written description requirement of the
statute. In re Higbee and Jasper, 527 F. 2d 1405, 188 USPQ
488, 489 (CCPA 1976).
In view of the factual situation presented to us in this
instance we will interpret the Examiner’s basis for the 35
U.S.C. § 112, first paragraph rejection as reliance on the
“written description” portion of the statute. “The function
of the description requirement [of the first paragraph of 35
U.S.C.
§ 112] is to ensure that the inventor has 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 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).
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