Appeal 95-4477
Application 08/006,350
reviewing court in Eiselstein v. Frank, 52 F.3d 1035, 1038-39,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995):
"Satisfaction of the description requirement insures
that subject matter presented in the form of a claim
subsequent to the filing date of the application was
sufficiently disclosed at the time of filing so that
the prima facie date of invention can fairly be held
to be the filing date of the application." Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d
1111, 1115 (Fed. Cir. 1991) (quoting In re Smith,
481 F.2d 910, 914, 178 USPQ 620, 623-24 (CCPA
1973)). In order to determine whether a prior
application meets the "written description"
requirement with respect to later-filed claims, the
prior application need not describe the claimed
subject matter in exactly the same terms as used in
the claims; it must simply indicate to persons
skilled in the art that as of the earlier date the
applicant had invented what is now claimed. Id. at
1563, 19 USPQ2d at 1116; see In re Wertheim, 541
F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976) ("Lack of
literal support . . . is not enough . . . to support
a rejection under § 112."). The test is whether the
disclosure of the application relied upon reasonably
conveys to a person skilled in the art that the
inventor had possession of the claimed subject
matter at the time of the earlier filing date.
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