Appeal No. 1998-0701
Application 08/263,744
digital signals and that appellant is not precluded from
limiting the claimed invention to analog signals only.
The purpose of the written description requirement is
to ensure that the applicant conveys with reasonable clarity
to those skilled in the art that he was in possession of the
invention as of the filing date of the application. For the
purposes of the written description requirement, the invention
is "whatever is now claimed." Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Thus,
the critical question on this issue is whether appellant was
in possession of the magnetic recording and reproducing system
with
respect to analog audio and video signals at the time this
application was filed.
We decide this question in favor of appellant for
essentially the reasons argued by appellant in the brief. We
are not persuaded by the examiner’s view that the original
disclosure only supports recording and reproducing digital
audio data and that the phrase “analog audio and video signal”
constitutes new matter. The original disclosure relates to a
conventional 8mm camcorder. The evidence on this record
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