Appeal No. 2002-1626 Page 6
Application No. 09/287,135
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 USPQ2d at 1116). A
rejection on the description requirement is fully defeated by a specification which
describes the invention in the same terms as the claims. See In re Bowen, 492 F.2d
859, 864, 181 USPQ 48, 52 (CCPA 1974). In addition, an original claim can provide
the written description support required by the first paragraph of 35 U.S.C. § 112. See
In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397, supplemental opinion, 480
F.2d 879, 879-80, 178 USPQ 149 (CCPA 1973) and In re Smith, 481 F.2d 910, 914,
178 USPQ 620, 624 (CCPA 1973).
Our position
We will not sustain the rejection of claims 7, 8 and 16 to 19 under 35 U.S.C.
§ 112, first paragraph, for the reasons set forth by the appellants in their briefs. Suffice
it to say, pages 10-14 of the specification clearly provide the required written description
support for the subject matter of claims 7, 8 and 16 to 19. Additionally, claims 7, 8 and
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