Appeal No. 2000-0182 Page 7
Application No. 08/831,327
New grounds of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
1. Claims 1, 3/1, 4/1, 10/1, 11/1, 12/1 and 22 are rejected
under 35 U.S.C. § 112, first paragraph, as containing subject
matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that
the appellants, at the time the application was filed, had
possession of the claimed invention.
The written description requirement 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
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