Appeal No. 1996-3324
Application No. 08/132,969
appellants invented processes including those limitations."
Wertheim, 541 F.2d at 262, 191 USPQ at 96 citing In re Smythe,
480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973).
Furthermore, the Federal Circuit points out that "[i]t is not
necessary that the claimed subject matter be described
identically, but the disclosure originally filed must convey
to those skilled in the art that applicant had invented the
subject matter later claimed." In re Wilder,
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984), cert.
denied, 469 U.S. 1209 (1985), citing In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In the present instance, the 35 U.S.C. § 112, first
paragraph, rejection resulted from an amendment during
prosecution to originally filed independent claim 1 which
added the following language:
... said first digital signal, said
second digital signal, and said third
digital signal are each independent of
each other.
The Examiner has taken the position (Answer, pages 4, 6, and
7) that the recited independent nature of the digital signals
supplied to the D/A converters is not supported by any
8
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