Appeal No. 2000-0449
Application No. 08/636,614
Appellant has not identified, nor do we find, any
specific statement in the specification that the first and
second compartments 72, 78 of Figure 6 overlap at a sealed
edge, as recited in the portion of claim 1 underlined above.
However, "claimed subject matter need not be described in haec
verba in the specification in order for that specification to
satisfy the description requirement [of § 112, first
paragraph]." In re Smith, 481 F.2d 910, 914, 178 USPQ 620,
624 (CCPA 1973). The test is whether the specification as
originally filed would convey with reasonable clarity to those
skilled in the art that the applicant was in possession of the
invention now claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Also,
"under proper circumstances, drawings alone may provide a
’written description’ of an invention as required by § 112."
Id., 935 F.2d at 1565, 19 USPQ2d at 1118.
Unless the applicant claims embodiments of the invention
completely outside the scope of the specification, the
examiner, in making a rejection for lack of written
description, must provide reasons why one of ordinary skill
would not consider the description sufficient in order to make
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