Appeal No. 1999-1505 Page 7
Application No. 08/638,454
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 12 through 19 stand rejected under 35 U.S.C. §
112, first paragraph, as the specification, as originally
filed, does not provide support for the invention as is now
claimed.
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). The written description requirement serves "to ensure
that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
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