Appeal No. 1999-1504 Page 10
Application No. 08/787,262
Claims 13, 18-22 and 26 stand rejected under 35 U.S.C. § 112, first paragraph, as the
specification, as originally filed, does not provide support for the invention as is now claimed.
The written description requirement of the first paragraph of 35 U.S.C. § 112 serves
"to ensure that the inventor had possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him; how the specification accomplishes this is not
material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to
meet the written description requirement, the appellant does not have to utilize any particular
form of disclosure to describe the subject matter claimed, but "the description must clearly
allow persons of ordinary skill in the art to recognize that [he or she] invented what is
claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put
another way, "the applicant must . . . 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." Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
Claims 13, 18-22 and 26 each recite that the height of the bulge (claims 13 and 26) or6
the distance from the longitudinal axis of a peripheral surface of the bulge (claims 18-22) is
continuously reduced from a first point diametrically opposite from the first hood to a second
point diametrically opposite from the second hood. Claim 19 further recites that the center of
the bulge is located at a position diametrically opposed to said first hood. Appellant's original
These claims were presented for the first time in the amendment filed April 14, 1997 (Paper No. 2) and,6
thus, do not form part of the original disclosure.
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