Appeal No. 96-3613
Application 08/335,496
OPINION
In reaching our conclusion on the issue raised in this
appeal, this panel of the board has carefully considered
appellant’s specification, drawing, and claims, and the
respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
We affirm the examiner’s rejection of claim 27 under
35 U.S.C. § 112, first paragraph. It follows that claims 29 and
31 through 36 stand with claim 27.
The description requirement of 35 U.S.C. § 112, first
paragraph, is separate and distinct from the enablement
requirement. That one skilled in the art might realize from
reading a disclosure that something is possible is not a
sufficient indication to that person that the something is part
of an appellant's invention. See In re Barker, 559 F.2d 588,
593, 194 USPQ 470, 474 (CCPA 1977). The test for determining
compliance with the written description requirement is whether
the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the
presence or absence of literal support in the specification for
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007