Appeal No. 1997-3670
Application No. 08/541,799
journeyman practitioner in the art that the inventor had possession at that time of that which
he now claims. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
Literal support in the disclosure for the terms of the claims challenged by the examiner is
not necessary in order to show such possession. In re Wright, 866 F.2d 422, 425, 9
USPQ2d 1649, 1651 (Fed. Cir. 1989); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ
1089, 1096 (Fed. Cir. 1983); In re Herschler, 591 F.2d 693, 700-701, 200 USPQ 711,
717 (CCPA 1979); In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971).
While we sympathize with the examiner’s position since the clarity of the disclosure
leaves a bit to be desired in terms of a disclosure of “means for periodically storing...and
means for determining...the input and output lists,” our review of pages 23-24 of the
original specification finds us in agreement with appellants that there is adequate support
for the cited claimed limitations, although, in our view, just barely.
Since a difference equation example is given at page 23 and it is explained that the
“difference terms contain variables representing previous history...,” artisans would have
recognized this as a periodic storing and updating of values since it appears reasonable
that a knowledge of “previous history” would imply that there is a periodic
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