Appeal No. 1999-1773
Application No. 08/497,858
incorporated into the answer]. Thus, the rejection invokes both the written description
requirement and the enablement requirement of 35 U.S.C. § 112.
We consider first the rejection as it relates to the written description requirement.
The purpose of the written description requirement is to ensure that the applicants convey
with reasonable clarity to those skilled in the art that they were in possession of the
invention as of the filing date of the application. For the purposes of the written description
requirement, the invention is "whatever is now claimed." Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
This portion of the examiner’s rejection is apparently based on the failure of the
specification to set forth the polynomial transfer function although this transfer function is
set forth in the drawings as originally filed. For purposes of the written description
requirement, the appropriate question is whether the originally filed application supports
the invention now being claimed. We find that it does. The originally filed application
clearly supports the claimed polynomial transfer function as well as the claimed means for
resetting and means for producing. Each of these elements of the claims is described to
the extent claimed in the original application. Therefore, the original application provides
adequate support that appellants were in possession of the claimed invention at the time
that this application was filed.
We now consider the rejection as it relates to the enablement requirement. To
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