Appeal No. 1997-0820
Application No. 08/364,541
Appealed claims 1-5 and 10-13 stand rejected under
35 U.S.C. § 112, first paragraph.3
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner's
rejection.
It is the examiner's position that the claim language
"without injecting external heat" lacks descriptive support in
the original specification. However, while the examiner is
correct that the criticized claim language is not described in
ipsis verbis in the original specification, such is not
required by § 112, first paragraph. In re Herschler, 591 F.2d
693, 701, 200 USPQ 711, 717 (CCPA 1979); In re Smith, 481 F.2d
910, 914, 178 USPQ 620, 624 (CCPA 1973). The proper inquiry
is whether the original specification reasonably conveys to
one of ordinary skill in the art that the inventor had in his
or her possession, as of the filing date of the application,
the later added limitation. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563,
3The examiner has withdrawn the rejection under
35 U.S.C. § 112, second paragraph (see page 2 of Answer).
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