Appeal No. 1998-1231 Page 4
Application No. 08/729,835
with the examiner’s rationale in support of the rejections and
arguments in rebuttal set forth in the examiner’s answer.
We reverse.
We begin with the rejection of claims 1-11 under 35
U.S.C.
§ 112, first paragraph. The test for determining compliance
with the written description requirement is whether the
disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter, rather than the
presence or absence of literal support in the specification
for the claim language. See Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991)
and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). “Precisely how close the original
description must come to comply with the description
requirement of section 112 must be determined on a
case-by-case basis.” Eiselstein v. Frank, 52 F.3d 1035, 1039,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935
F.2d at 1561, 19 USPQ2d at 1116).
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