Appeal No. 1996-1141
Application 08/109,166
Claims 30-39 are rejected under 35 U.S. C. § 112, first paragraph.5
The examiner contends that there is no descriptive support in the specification, as
°
originally filed, for the phrase “approximately 90 or more” “literally or conceptually”
(answer, pages 3 and 5). In response to the examiner’s position, appellants cite page 5,
lines 12-13 of the specification which states that “the turbulent flow is provided by a plurality
of 90 degree turns.” Appellants also cite Figure 1 to show “the flow undergoes successive
90° turns, or a 180° change in direction, twice, to provide the tiered configuration.”
We disagree with appellants that the above cited language supports the language
“approximately 90° or more.”
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 434, 437 (CCPA 1977); 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).
5 Claims 30-39 stand or fall together.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007