Appeal No. 97-0939
Application 08/127,319
Kieturakis;
The rejections are explained in the final rejection (Paper No. 11, mailed June 5, 1995), the
examiner’s answer (Paper No. 21, mailed August 22, 1996), the advisory letter (Paper No. 27, mailed
November 12, 1997) in response to appellant’s reply brief, and the supplemental examiner’s answer
(Paper No. 30, mailed December 30, 1997).
The opposing viewpoints of appellant are set forth in the brief (Paper No. 20, filed March 19,
1996), and the reply brief (Paper No. 24, filed July 31, 1997). In addition, a declaration under 37
CFR § 1.131 by inventor Peter J. Wilk (Paper No. 26) has been submitted with the reply brief for the
purpose of “swearing behind” the Kieturakis patent that forms the basis for the newly entered § 102(e)
rejection.
Rejection (a)
The 35 U.S.C. § 112, First Paragraph, Rejection
Looking first at the rejection of claims 1-7 and 20-29 under 35 U.S.C. § 112, first paragraph,
we understand this rejection to be based upon the written description requirement of the first paragraph
of § 112. In general, the test for determining compliance with the written description requirement of §
112 is whether the disclosure of the application as originally filed reasonably conveys to the artisan that
the inventor had possession at that time of the later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim language under consideration. Further, it is
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