Ex parte TAKIZAWA - Page 10




              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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