Appeal No. 95-2440
Application 07/705,726
We remand this application to the examiner with
instructions to make appropriate findings of fact and detailed
analyses respecting the remaining rejections.2
REJECTION UNDER § 112, FIRST PARAGRAPH
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). The requirement
for "possession" does not require literal support in the
original disclosure. Eiselstein v. Frank, 52 F.3d 1035, 1038,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995). Rather, it only
requires that the original disclosure reasonably conveys to
those skilled in the art, as of the filing date, the invention
2If the examiner remains of the opinion that any claim
rejected herein is still unpatentable under the same section
of the statute, he or she should reopen prosecution so that
appellants have a full and fair opportunity to respond.
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