Appeal No. 94-3399
Application 07/871,374
The issue of whether an original disclosure adequately
describes the subject matter later claimed is a question of
fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991). This written description
requirement serves to ensure that the inventor had
"possession", as of the filing date of the application relied
on, of the specific subject matter later claimed. In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). No
literal description is needed to support "possession".
Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470
(Fed. Cir. 1995). Rather, the original disclosure only needs
to reasonably convey to those skilled in the art, as of the
filing date, the invention now claimed. Vas-Cath, 935 F.2d at
1563-64, 19 USPQ2d at 1117; In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983). It is, therefore,
incumbent upon the examiner to supply the factual basis to
establish that the original disclosure not only does not
provide literal support for the invention now claimed, but
also does not reasonably convey to one of ordinary skill in
the art, as of the filing date, the invention now claimed.
See In re Alton, 76 F.3d 1168, 1174-75, 37 USPQ2d 1578, 1583
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