Appeal No. 1999-1779
Application No. 08/480,561
and 31).
OPINION1
The Rejections Under 35 U.S.C. § 112
Considering first the rejection under the first paragraph
of section 112, the examiner has not specified, nor can we
determine from the expression of the rejection, whether the
shortcoming in the appellant’s disclosure is under the
description requirement or the enablement requirement. In any
event, we point out that 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
1The propriety of the examiner’s refusal to include claims
12, 17 and 18 under the elected species, from which relief is
requested on page 24 of the Brief, is a petitionable matter,
not an appealable one. See Manual of Patent Examining
Procedure (MPEP) §§ 1002 and 1201.
4
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