Appeal No. 2004-0551 Page 5
Application No. 09/393,256
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).
The basis for this rejection (answer, p. 3) is that the disclosure, as originally filed,
does not explicitly exclude electrical circuit elements from the shaft and the probe head
as recited in independent claim 1. The examiner acknowledged that the appellant's
specification, on page 4, lines 3-4, recites "[t]he probe has no electrical connections,
and essentially constitutes a passive mechanical tool." The examiner then asserted
that while the specification discloses "no electrical connections" the specification fails to
disclose "said shaft and said probe head having an absence of electrical circuit
elements" as recited in claim 1. The examiner goes on to (1) state that the appellant is
claiming what his device is not rather than what his invention is, and (2) suggests that
the appellant use the transitional phrase "consisting of" for exclusion of elements from
the claimed invention.
In our opinion, the limitation in question has the necessary written description
support in the original disclosure when the disclosed subject matter is given its
"necessary and only reasonable construction." In that regard, the above-quoted
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