Appeal No. 96-3054
Application 08/134,147
This rejection relates to the written description
requirement of 35 U.S.C. § 112. The purpose of the written
description requirement is to ensure that the applicant
conveys with reasonable clarity to those skilled in the art
that he was in possession of the invention as of the filing
date of the application. For the purposes of the written
description requirement, the invention is "whatever is now
claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1564, 19
USPQ2d at 1117 (Fed. Cir. 1991).
Appellant argues that the specification supports
the claim recitation in that it is an “inherent property of
the embodiment completely disclosed in the application as
originally filed.”, and explains how the invention operates.
(Brief, pages 5-7.) The Examiner states “The [A]ppellant has
cited several instances contending that they disclos[]e the
above feature. However, none of them is seen to support the
[A]ppellant’s arguments.” (Answer, bottom of page 9.) An
invention claimed need not be described in ipsis verbis in
order to satisfy the written description requirement of 35
U.S.C. § 112, first paragraph. In re Lukach, 442 F.2d 967,
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007