Appeal No. 94-3371
Application 07/986,878
While a negative limitation is not impermissible per se, it must
be definite and must comply with the written description
requirement of 35 U.S.C. § 112, first paragraph. Chisum on
Patents, Vol. 3, Chapter 8.06[3], page 8-144 (1997). See Ex
parte Hradcovsky, 214 USPQ 554, 555 (Bd. App. 1982); In re Duva,
387 F.2d 402, 408, 156 USPQ 90, 95 (CCPA 1967); In re Bankowski,
318 F.2d 778, 782-783, 138 USPQ 75, 79 (CCPA 1963). We do not
find the limitation to be indefinite, but it would appear that it
may not satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph.
To comply with the written description requirement, it is
not necessary that the invention be claimed using the same words
as in the specification. All that is required is that the
specification reasonably convey to a person of ordinary skill in
the art that as of the filing date of the application, the
inventors had possession of the subject matter later claimed. In
re Edwards, 568 F.2d 1349, 1351-1352, 196 USPQ 465, 467 (CCPA
1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976); In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA
1971). The determination as to whether the specification
provides support for the newly claimed subject matter is
primarily factual and depends on the nature of the invention and
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