Appeal No. 1997-2099
Application No. 08/233,468
of the claimed invention, in that the disclosure does not reasonably convey to one
skilled in the relevant art that the inventor had possession of the claimed invention at the
time the application was filed,” i.e., failure to fulfill the written description
2
requirement. (Examiner’s Answer, pg. 7).
Claims 1 to 10, 17 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Nonaka and Ohuchi. (Examiner’s Answer,
page 3).
Claims 1 to 20 are rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Nonaka, Rockenfeller and Ohuchi. (Examiner’s Answer, page 5).
Claims 1 to 10, 17 and 18 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Itoh and either Ohuchi or Aronson. (Examiner’s
Answer, page 6).
OPINION
A. The Rejection under Section 112, ¶1
In order for a claim to satisfy the written description requirement, the original
application must reasonably convey to those skilled in the relevant art that the applicant,
as of the filing date of the application, had possession of the claimed invention. In re
2See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560,
19 USPQ2d 1111, 1114 (Fed. Cir. 1991).
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