Appeal No. 97-2480
Application 08/296,122
Claim 14 is rejected under 35 U.S.C. 112, first
paragraph, as being based upon an underlying disclosure which
lacks descriptive support for claimed subject matter.
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, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434
U.S. 1064 (1970). 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 the claim language.
Further, the content of the drawings may also be considered in
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007