Appeal No. 1997-3090
Application 08/309,280
answer, the Examiner states that Appellants' disclosure does
not set forth an embodiment in which there can be only one
member extending from the plate to hold the motor. The
Examiner points out that in each of the embodiments there are
two members extending from the plate to hold the motor. The
Examiner needs to properly consider whether Appellants had
possession, as of the filing date of the application, of the
specific subject matter later claimed by Appellants.
The Examiner shall determine under the following legal
analysis whether the claims should be rejected under 35 U.S.C.
§ 112, first paragraph, for failing to meet the description
requirement of that paragraph.
"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] 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." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
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