Appeal No. 2002-1626 Page 5
Application No. 09/287,135
of electronic chip components in the hopper is not disclosed in the originally filed
specification."
The appellants' position
The appellants argue that the rejection is improper. Specifically, on pages 7-9 of
the brief and pages 4-6 of the reply brief the appellants meticulously set forth where the
subject matter of claims 7, 8 and 16 to 19 finds written description support in the
description of the preferred embodiments section of the original specification (i.e.,
pages 10-14).
The case law
The written description requirement serves "to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him; how the specification accomplishes this is not material." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
written description requirement, the appellant does not have to utilize any 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
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