Appeal No. 96-2223 Page 4
Application No. 07/885,708
In order to determine compliance with the written
description requirement of 35 U.S.C. 112, first paragraph, the
inquiry to be made pertains to whether the disclosure
(specification, drawings, claims) as originally filed
reasonably conveys to the journeyman practitioner in the art
that the inventor had possession at that time of that which he
now claims. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976). Literal support in the disclosure for the terms
of the claims challenged by the examiner is not necessary in
order to show such possession. In re Wright, 866 F.2d 422,
426, 9 USPQ2d 1649, 1652 (Fed. Cir. 1989); In re Kaslow, 707
F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Herschler, 591 F.2d 693, 700, 200 USPQ 711, 717 (CCPA 1979); In
re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 797 (CCPA 1971).
There is no question that the original disclosure contains
support for “testing” within the service node. Support for
this recitation is rampant throughout the specification and the
original claims. For example, original claim 1 recited, in
part, “testing the subscriber in the service node...” What the
examiner really questions is support for the service node not
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