Appeal No. 1999-0445
Application No. 08/351,583
. . . drawings alone may be sufficient to provide the "written
description of the invention" required by § 112, first paragraph.
As explained on pages 3-6 of the answer, the examiner urges that the appellant's
specification fails to provide adequate written description of a noncontact tonometer comprising
a processing means as recited in the last paragraph of claim 1. In light of our discussion,
supra, it should be apparent that we consider the disclosure on pages 11 and 12 of the
appellant's specification sufficient to provide written descriptive support for the features of the
processing means recited in the last paragraph of claim 1.
Moreover, we note that claims 1-3, 5, 6 and 8-12 before us on appeal are identical in
language to original claims 1-3, 5, 6 and 8-12 of this application. Therefore, there can be no8
question that the original claims provide written descriptive support for the subject matter of
claims 1-3, 5, 6 and 8-12. Likewise, while claim 4 has been amended from its original9
presentation to clarify that the processing means, rather than the pressure detection means,
monitors the gradients, we are of the opinion that the language of original claim 4, especially
when read in light of the disclosure on page 10, line 31, to page 12, line 13, of the appellant's
8It is important to note that the appellant has amended the specification to indicate that the instant
application is a continuation-in-part of earlier application no. 07/933,303 and has filed a declaration meeting the
requirement of 37 CFR § 1.63(e) for a continuation-in-part application (see Paper Nos. 8 and 9). Accordingly, it is
the disclosure of the application as of the filing date of the instant application (December 7, 1994) which must be
considered in determining whether the written description requirement has been met.
9Where, as here, an original claim is identical in language to the subject matter now being claimed,
nothing more is necessary for compliance with the description requirement of the first paragraph of § 112. See
Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 938, 9 USPQ2d 1321, 1326 (Fed. Cir. 1990), In re Smith,
481 F.2d 910, 914, 178 USPQ 620, 624 (CCPA 1973), and In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397
(CCPA 1973).
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