Appeal No. 2003-2074
Application No. 09/095,325
in a claim is not present in the written description” (answer-
page 4, lines 6-8). Such an “explicit” disclosure of the claimed
term is not required under 35 U.S.C. § 112, first paragraph. An
invention claimed need not be described ipsis verbis in the
specification in order to satisfy the disclosure requirements of
35 U.S.C. 112. Ex parte Holt, 19 USPQ2d 1211 (Bd Pat App &
Inter, 1991).
Accordingly, we will not sustain the rejection of claims
104, 105, and 109-114 under 35 U.S.C. § 112, first paragraph, as
reciting subject matter for which there is an inadequate written
description. We find that the original description, albeit in
different language than is now claimed, would have conveyed to
the artisan that the inventors had possession of the subject
matter which they now claim at the time of filing the
application.
With regard to claims 33-68, the examiner complains that
there is no “explicit” recitation in the specification for the
now-claimed transparency, i.e., that the message recipients are
unaware that the reply messages originated at a first address
associated with the host system, rather than at the host system
itself.
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