Appeal No. 1998-0138
Application 08/381,809
The rejection of claims 5 and 16 under 35 U.S.C. § 112, ¶ 1, for lack of a written
description
The examiner has rejected claims 5 and 16 under 35 U.S.C. § 112, ¶ 1, because the
specification as originally filed did not include a written description of the limitation requiring that the
palladium compound “exhibits substantially no hydrosilylation catalytic activity.” The quoted language
does not appear in the disclosure as originally filed, but was added by amendment in response to
rejection of the original claims. Paper 5, p. 2. We reverse.
The general test for determining whether later claimed subject matter is supported by an earlier
written description is whether the disclosure of the application “reasonably conveys to a person skilled
in the art that the inventor had possession of the claimed subject matter at the time of the earlier filing
date.” Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir. 1995); Ralston
Purina Co. v. Far-Mar-Co., Inc, 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985); In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). To comply with the written
description requirement, the specification must provide information that clearly allows persons having
ordinary skill in the art to recognize that the applicant invented what is claimed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991); In re Gosteli, 872
F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). In Vas-Cath the court noted that the
disclosure must “convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, [the inventor] was in possession of the invention.” Vas-Cath, 935 F.2d at 1563-64, 19
USPQ2d at 1117 (emphasis original). The court went on to state that the “invention is, for the purpose
of the 'written description' inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d at 1564, 19
USPQ2d at 1117 (emphasis original). However, where different language is relied upon for support,
“the specification must contain an equivalent description of the claimed subject matter.” Lockwood v.
American Airlines, 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); Wagoner v.
Barger, 463 F.2d 1377, 1380, 175 USPQ 85, 86 (CCPA 1972).
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