Appeal No. 94-4307
Application 07/919,267
process of the invention, is contemplated, in the application as
filed” (Brief, paragraph bridging pages 6 and 7). We disagree.
The function of the 35 U.S.C. § 112, first paragraph,
written description requirement is to ensure that the inventors
had possession of the specific subject matter later claimed as of
the filing date of the application. In re Edwards, 568 F.2d
1349, 1351, 196 USPQ 465, 467 (CCPA 1978); In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to comply
with this requirement, it is not necessary that the claimed
limitation be described ispis verbis in the specification. In re
Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971).
However, the specification must 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 at 1351-1352, 196 USPQ at
467; In re Wertheim, 541 F.2d at 262, 191 USPQ at 96. 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 the amount of
knowledge imparted by the disclosure to those of ordinary skill
in the art. In re Wertheim, 541 F.2d at 262, 191 USPQ at 96.
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