Ex parte SUNAMI et al. - Page 8




               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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