Appeal No. 96-2535
Application 08/028,473
We merely note that the appellant does not have to
provide ipsis verbis support, In re Lukach, 442 F.2d 967, 969,
169 USPQ 795, 796 (CCPA 1971). The description in the
specification must merely allow persons of ordinary skill in
the art to recognize that the inventor invented what is now
claimed. In this instance, given the use of the term
“morphology” in the relevant prior art as evidenced by the
Plano disclosure, it is our view that the specification
clearly conveys that appellant was in possession of the
subject matter of polycrystalline diamond
morphologies at the time the application was filed.
Consequently, the rejection of claims 1 through 13 and 19
under 35 U.S.C.
§ 112, first paragraph, is reversed.
The examiner has rejected claims 1 through 13 and 19
under 35 U.S.C. § 112, second paragraph, as indefinite on
three separate grounds. Firstly, the examiner states that it
is unclear what is meant by the term “morphology.”
The test of whether a claim complies with § 112, second
paragraph, is:
whether the claim language, when read by a person
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