Appeal No. 1998-2849 Page 7
Application No. 08/584,158
The written description issue
We will not sustain the rejection of claims 35 through 74
under 35 U.S.C. § 112, first paragraph.
The test for determining compliance with the written
description requirement 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. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
In addition, the examiner has the initial burden of
presenting evidence or reasons why persons skilled in the art
would not recognize in an applicant's disclosure a description
of the invention defined by the claims. In re Wertheim, 541
F.2d 257, 265, 191 USPQ 90, 98 (CCPA 1976); Ex parte Sorenson,
3 USPQ2d 1462, 1463 (Bd. Pat. App. & Int. 1987).
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