Appeal No. 97-0225
Application No. 08/357,789
original disclosure. The purpose of the written description
requirement of 35 U.S.C. § 112, first paragraph, is to convey
with reasonable clarity to those skilled in the art that, as
of the filing date sought, appellants were in possession of
the invention now claimed. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). We
note that there is no literal support in the original
disclosure for the phrase "wherein said reactive groups are
carboxylic acid groups" in claims 22 and 23. However, the
specification as originally filed does describe polyimide
precursors (polyamic acids) having carboxylic acid groups
which are reactive to the claimed complex. See Specification,
page 4. The examiner also acknowledges at page 8 of the
Answer that the carboxylic acid groups are the reactive
groups. Specifically, the examiner states that "[t]he
[e]xaminer agrees that carboxylic acid groups are reactive
groups..." See Answer, page 8. Under these circumstances, we
cannot agree with the examiner that the disclosure as
originally filed does not reasonably convey to one of ordinary
skill in the art that, as of the filing date sought,
appellants had possession of the invention now claimed.
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