Ex parte TAKEUCHI et al. - Page 7




          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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