Appeal No. 95-4373
Application 07/917,108
invented processes including those limitations." Wertheim,
541 F.2d at 262, 191 USPQ at 96 (citing In re Smythe, 480 F.2d
1376, 1382, 178 USPQ 279, 284 (CCPA 1973)). Furthermore, the
Federal Circuit points out that "[i]t is not necessary that the
claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in the
art that applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372
(Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985), (citing In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983)).
The Examiner argues on pages 3 and 4 of the answer that the
disclosure as originally filed does not provide a description of
the amendments to the specification which recite “setting the
threshold value for an original image following a preceding
original image so high” and "for those images which the threshold
was set high." We note that appellant amended the specification
by filing an amendment on April 28, 1994. On page 2 of this
amendment, the specification is amended by adding the above
language to the specification.
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