Appeal No. 1998-2823
Application No. 08/458,010
“energy conducting member,” “insulation means” and
“replaceable elements” as lacking antecedent basis as being6
predicated on an alleged failure of the specification to
comply with the written description requirement (new matter)
of 35 U.S.C. § 112, first paragraph.
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventors had possession at that time of the
later claimed subject matter, rather than the presence or
absence of
literal support in the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983). Our reviewing Court has also made it clear that
by disclosing in a patent application a device that inherently
performs a function, operates according to a theory, or has an
The requirement that the terms and phrases used in the claims must6
find clear support or antecedent basis in the description is a requirement of
the rules, specifically, 37 CFR § 1.75(d)(1).
7
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