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. - 11 -Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 NextLast modified: November 3, 2007