Appeal No. 95-4189
Application 07/334,872
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 at 1351-52, 196 USPQ at 467; In re Wertheim, 541
F.2d at 262, 191 USPQ at 96; 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 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. The examiner has the initial burden of presenting evidence or reasoning as to why one
of ordinary skill in the art would not have recognized in the specification a description of the
invention as later claimed.
Claim 1 recites a “film” comprising a “single layer containing a plurality of [ferromagnetic]
crystal grains” having a carbide “positioned around each of said plurality of crystal grains.” The only
other independent claim, claim 2, is the same as claim 1 except that a boride is “positioned around
each of said plurality of crystal grains.” In the summary of the invention, appellants state on page 3,
lines 18-23 of the specification that
In order to achieve [a high saturated magnetic flux density film] ..., there is provided
a heat resistant, high saturation magnetic flux density film comprising a plurality of
crystal grains of ferromagnetic metal, and carbide or boride positioned around each
3
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Last modified: November 3, 2007