Appeal No. 1998-1827 Page 6
Application No. 08/644,932
In short, the examiner has apparently not given due
regard to the principle that claims are not to be interpreted
in a vacuum, but in light of information disclosed in
appellants’ specification and knowledge available in the prior
art as understood by a person of ordinary skill in the art.
See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). Consequently, we will not sustain the rejection under
35 U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 112, first paragraph
On this record, we determine that the examiner has not
met the burden of establishing a prima facie case under either
the written description or enablement portions of the first
paragraph of 35 U.S.C. § 112.
With regard to written descriptive support, all that is
required is that appellants’ specification reasonably convey
to one of ordinary skill in the art that as of the filing date
of the application, appellants were in possession of the
presently claimed invention; how the specification
accomplishes this is not material. See In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Edwards, 568 F.2d 1349, 1351-352,
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