Appeal No. 1997-1808 Page 8
Application No. 08/172,101
later-claimed subject matter. A disclosure that merely renders the later-claimed subject matter obvious
is not sufficient to meet the written description requirement; the disclosure must describe the claimed
invention with all its limitations. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158, 47 USPQ2d 1829,
1832 (Fed. Cir. 1998); Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (Fed. Cir. 1997). “That a person skilled in the art might realize from reading the disclosure
that such a step is possible is not a sufficient indication to that person that the step is part of appellants’
invention.” In re Barker, 559 F.2d 588, 593, 194 USPQ 470, 474 (CCPA 1977), cert. denied, 434
U.S. 1064 (1978)(quoting In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975)).
For the above reasons, we conclude that the disclosure, as originally filed, would not
reasonably convey to an artisan that the Appellants had possession, as of the filing date, of the subject
matter of the claims presently on appeal.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 30-32, 35, 41-43, 66, 67, and 74
under 35 U.S.C. § 112, first paragraph, as lacking written description is affirmed.
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