Appeal 2007-2082
Application 10/795,457
It is well established that the claimed subject matter need not be
described ipsis verbis in order to satisfy the disclosure requirement of § 112.
See In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971).
The disclosure need only reasonably convey to persons skilled in the art that
the inventor had possession of the subject matter in question. See In re
Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978). In
rejecting a claim under the first paragraph of § 112, it is incumbent upon the
Examiner to establish that the originally filed disclosure would not have
reasonably conveyed to one having ordinary skill in the art that Appellant
had possession of the now claimed subject matter. See Wang Laboratories,
Inc. v. Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed. Cir.
1993); see also In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1584
(Fed. Cir. 1996).
Applying the preceding legal principles to the specific facts of this
appeal, we determine that the Examiner has not met the initial burden of
establishing that the originally filed disclosure would not have reasonably
conveyed to one of ordinary skill in the art that Appellant had possession of
the claimed “without a polymerization step such as heating.” As correctly
argued by Appellant, this phrase appears in the originally filed Specification
at page 6 (Br. 3). The Examiner contends that this phrase must be modified
by the disclosed “when used to make models” and this modification does not
appear in claim 1 on appeal (Answer 5-6). However, we determine that this
phrase would have reasonably conveyed to persons skilled in this art that
Appellant had possession of the now claimed subject matter directed to a
method of producing molding materials in general (see claim 1 on appeal).
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