Appeal No. 1997-4234
Application No. 08/423,211
paragraph as lacking an adequate written description in the application as filed for the
presently claimed invention as it reflects the language of "a substantially sheet-like
substrate." The purpose of the written description requirement of 35 U.S.C. § 112, first
paragraph, is to convey with reasonable clarity to those skilled in the art, that, as of the
filing date sought, appellants were in possession of the invention now claimed. Vas-
Cath Inc. v. Makurar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
For the reasons set forth in the new ground of rejection, it is our opinion that it has not
been determined just what is encompassed by the claims and, therefore, it would
appear impossible to ascertain whether the disclosure, as filed, reasonably describes
the invention, presently claimed, in a manner which would establish that appellants
were in possession of the invention when the application was filed.
Therefore, we vacate the rejection of claims 1-27 and 29 under 35 U.S.C. § 112,
first paragraph. This does not preclude the examiner from reconsidering this issue
once a claim interpretation has been made. However, we would remind the examiner
that for the purposes of the written description requirement of 35 U.S.C. § 112, first
paragraph, the invention is whatever is now claimed. The description of the invention is
provided using descriptive means such as words, structures, figures, diagrams,
formulas, etc. The exact terms need not be used in haec verba. Lockwood v.
American Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966, (Fed. Cir. 1997);
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