Appeal No. 1999-1517
Application No. 08/837,523
particular form of disclosure to describe the subject matter
claimed, but "the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she]
invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012,
10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put another way, "the
applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or
she was in possession of the invention." Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed.
Cir. 1991). Finally, “(p]recisely how close the original
description must come to comply with the
description requirement of section 112 must be determined on a
case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935
F.2d at 1561, 19 USP02d at 1116).
Appellants make reference to various parts of the
specification which purport to provide the meaning for the
phrase “without driving essentially any dopant of the first
conductivity type through the insulating layer”, the phrase
which the examiner has found to be lacking support in the
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