Appeal No. 1997-1834 Page 4
Application No. 08/267,527
and 80 to 0 mole % recurring units of the formula
!O![!CH!CH !O!]!”
2
*
CH2
*
X
By an amendment filed April 3, 1995, Appellants removed the oxygen atom outside the left bracket of
each formula. The Examiner rejects the claims on the basis that the Specification, as originally filed,
does not provide support for the formulae as amended.
“The function of the description requirement is to ensure that the inventor had possession, as of
the filing date of the application relied on, of the specific subject matter later claimed by him [or her].”
In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). The written description
requirement serves to guard against an applicant’s overreaching by insisting that the applicant recount
the invention in such detail that his or her future claims can be determined to be encompassed within the
original disclosure. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115
(Fed. Cir. 1991). If there is an error in the claim and one of ordinary skill in the art would recognize the
error and its correction, then it is also apparent that the inventor had possession of the invention and
that there is no overreaching. What is key is that persons of ordinary skill in the art be able to recognize
from the disclosure that Appellants invented what is now claimed. In re Wertheim, supra. An obvious
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