Appeal No. 2000-0502
Application No. 08/890,438
express disclosure of sensing shift selector positions
"indicative of an operator intent to shift." However, for
compliance with the written description requirement of § 112,
first paragraph, the claimed subject matter need not be
described in haec verba in the specification, as long as the
specification as originally filed would "convey clearly to
those skilled in the art the information that the applicant
has invented the specific subject matter later claimed. " In
re Smith, 481 F.2d 910, 914, 178 USPQ 620, 624 (CCPA 1978).
See also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991)(application as filed must
convey with reasonable clarity to those of ordinary skill in
the art that the applicant was in possession of the invention
now claimed). Thus, although the written description may be
inherent rather than express, In re Mott, 539 F.2d 1291, 1297,
190 USPQ 536, 541 (CCPA 1976), in order for a disclosure to be
inherent the missing descriptive matter must necessarily be
present in the specification such that one skilled in the art
would recognize such a disclosure. Tronzo v. Biomet, Inc.,
156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed. Cir. 1998).
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