Appeal No. 1997-3376
Application No. 08/176,187
process of making and using it, in such full,
clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or
with which it is most nearly connected, to make
and use the same, and shall set forth the best
mode contemplated by the inventor of carrying out
his invention. (Emphasis added.)
In order for a claim to satisfy the written description
requirement, the original application must reasonably convey to
those skilled in the relevant art that applicant, as of the
filing date of the original application, had possession of the
claimed invention. In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d
1578, 1581 (Fed. Cir. 1996); In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983)). In general, it has been
held that although the applicant “does not have to describe
exactly the subject matter claimed,...the description must
clearly allow persons of ordinary skill in the art to recognize
that [applicant] invented what is claimed. ” In re Gosteli, 872
F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)(citations
omitted).
With these legal tenets in mind, we consider the facts of
the present case. During prosecution, appellants amended claim 1
by introducing the claim limitation with respect to the bulk or
surface electrical conductivity being “homogeneous and isotropic”
(paper no. 11, amendment filed February 2, 1996). Contrary to
current patent practice, appellants’ representative did not point
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