Appeal No. 1997-2193
Application 07/986,648
evidence in support of the position taken by him in support of
his rejection.
We remind the examiner that it is the function of the
specification, not that of the claims, to set forth the
practical limits of operation of an invention. In re Johnson,
558 F.2d 1008, 1017, 194 USPQ 187, 195 (CCPA 1977). Further,
in Johnson the court reminded the board that the language in
an appellants' claims must be read in light of the
specification as the specification would be interpreted by one
of ordinary skill in the art and not in a vacuum. Johnson,
558 F.2d at 1016, 194 USPQ at 194.
To the extent the examiner's rejection is founded on an
alleged lack of an adequate written description of what is now
claimed by appellants, the question to be resolved concerning
the "written description" requirement of 35 U.S.C. § 112,
first paragraph, is whether or not appellants' original
disclosure reasonably conveyed that they were possessed of, as
of their filing date, the invention later claimed by them.
The primary inquiry into satisfaction of the written
description requirement is factual and depends on the nature
of the invention and the amount of knowledge imparted to those
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