Appeal 2007-2771
Application 10/418,661
and 27 introduces a new concept not provided in the application disclosure,
as originally filed, in violation of the first paragraph of 35 U.S.C. § 112?
PRINCIPLES OF LAW, FACTS, and ANALYSES
According to In re Wertheim, 541 F.2d 257, 262-265, 191 USPQ 90,
96-98 (CCPA 1976):
The function of the description requirement is 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. . . . It is
not necessary that the application describe the claim limitations
exactly….but only so clearly that persons of ordinary skill in
the art will recognize from the disclosure that appellants
invented processes including those limitations. [Citations
omitted.]
….If lack of literal support alone were enough to support a
rejection under 112, then the statement of In re Lukach [442
F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971)] that “the
invention claimed does not have be described in ipsis verbis in
order to satisfy the description requirement of [§]112,” is empty
verbiage. The burden of showing that the claimed invention is
not described in the specification rests on the PTO in the first
instance, and it is up to the PTO to give reasons why a
description not in ipsis verbis is insufficient.
Our reviewing Court in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560-64,
19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) also stated:
….drawings alone may be sufficient to provide the “written
description of the invention” required by § 112, first paragraph.
Therefore, it is incumbent upon the Examiner to demonstrate that the
application disclosure, including the drawings, as originally filed, does not
provide written descriptive support for the concept of what is later claimed.
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013