Appeal No. 1997-2678
Application No. 08/347,270
in the original disclosure support may be found for each and
every one of the contested phrases in the claims.
We suspect that the examiner is attempting to find and
match the exact words of the claims with words or phrases
within the original disclosure. However, if the specification
contains a description of the claimed invention, albeit not in
ipsis verbis (in the identical words), then the examiner, in
order to meet the burden of proof, must provide reasons why
one of ordinary skill in the art would not consider the
description sufficient. In re Alton, 76 F.3d 1168, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996). It is enough that the original
disclosure makes clear that the applicant had possession of
the invention now claimed at the time the application was
originally filed. We hold that it is clear, in the instant
case, that appellant did, indeed, have such possession.
We also note that although appellant painstakingly went
through each and every claimed phrase objected to by the
examiner and pointed out specifically the support for each one
in the original disclosure, the examiner has not convincingly
rebutted such showings, contending only that the “wordings
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