Appeal No. 1998-0607 Page 12
Application No. 08/506,857
explain how to "make and use"; the applicant must also convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was
in possession of the invention. The invention is, for purposes of the "written
description" inquiry, whatever is now claimed.
In this instance, both the language in original claims 4 and 5 and the disclosure on pages 5 and
6 of the appellants' original specification clearly convey that the appellants were in possession
of the invention as recited in claims 4 and 5, including means articulating the mirrors so as to
enable them to be retracted.
For the foregoing reasons, we shall not sustain the examiner's rejection of claims 4 and
5 under the first paragraph of 35 U.S.C. § 112.
Rejection (3)
It does not appear to be in dispute that Eustache discloses the subject matter of claim 1
with the exception of a mirror carried on said plurality of assembled modules. To overcome
this deficiency, the examiner relies upon the teachings of Miller (see answer, page 7). Miller,
as discussed above, discloses two embodiments of retractable mirrors, one of which (Figures 1-
6) is retractable and extendible into and out of a well in the front fender of a vehicle and the
other of which (Figures 7-14) is pivotable into and out of a well in a door panel of a vehicle.
While we agree that Miller would have suggested to one of ordinary skill in the art provision of
such a retractable mirror on the Eustache vehicle, the well of either a front fender or a door
panel cannot, in our opinion, reasonably be considered a part of "said plurality of assembled
modules" as required by the claim. Further, we perceive no suggestion to provide such a
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