Appeal No. 96-2884
Application No. 08/181,997
II. Claims 24, 30, 35 and 36 stand rejected under 35 U.S.C. 112, first
paragraph, description requirement. All the claims are argued together (brief, page
7).
The examiner contends that the new ranges now claimed with respect to
the temperature of the second gas (claim 24) and the phrase “no more than” (claims 30,
35 and 36) are not supported by the originally filed specification. We affirm this
rejection.
The function of the description requirement is to ensure that the inventor
had possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him. In re Edwards, 568 F.2d 1349, 1351, 196 USPQ 465, 467
(CCPA 1978). To comply with the description requirement it is not necessary that the
application describe the claimed invention in ipsis verbis, In re Lukach, 442 F.2d 967,
968-69, 169 USPQ 795, 796 (CCPA 1971); all that is required is that it reasonably
convey to persons skilled in the art that, as of the filing date thereof, the inventor had
possession of the subject matter later claimed by him. In re Driscoll, 562 F.2d 1245,
1247, 195 USPQ 434, 437 (CCPA 1977).
Contrary to appellant’s argument, we do not find that appellant’s
specification, at page 23, lines 8-11 and page 21, line 25-page 22, line 2, supports the
now claimed ranges. The language at page 23, lines 8-11 refers to the temperature of
the first product, not the temperature of the second gas. The language in the
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