Appeal No. 1998-2500
Application No. 08/276,154
the first paragraph of 35 U.S.C. §112] is 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." In re Wertheim, 541 F. 2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). "It is not
necessary that the application describe the claim limitations exactly, . . . but only so clearly
that persons of ordinary skill in the art will recognize from the disclosure that appellants
invented processes including those limitations." Wertheim, 541 F.2d at 262, 191 USPQ at
96; see generally In re Smythe and Shamos, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973). We may view the examiner’s rejection as based upon a lack of written
description since the examiner states that “the added material which is not supported by the
original disclosure is as follows.”
Appellants argue that the rejection under 35 U.S.C. § 112, first paragraph, is in error
because the specification as originally filed is replete with support for the claimed features.
(See brief at page 15.) We agree with appellants. The examiner maintains that the
amendment filed Jan. 23, 1996, introduced new matter into the specification, which we
interpret to mean a lack of written description for the claim language. Specifically, the
examiner questions the claim language
the track changer providing communication channel, other than the controller,
between the formatter and the servo positioner such that data transfer can
begin upon the servo positioner completing positioning the head, in response
to the signal from the track changer and without subsequent instructions from
the controller, and such that servo positioning can begin after the formatter
completes data transfer, in response to a signal
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