Appeal No. 96-1246
Applicaton No. 08/205,812
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 has not shown that the inventor did not have
possession, as of the filing date of the application relied
on, of the specific subject matter later claimed by him.
Thus, we will not sustain the rejection on the basis of
written description.
In order to comply with the enablement provision of
35 U.S.C. § 112, first paragraph, the disclosure must
adequately describe the claimed invention so that the artisan
could practice it without undue experimentation. In re
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