Appeal No. 1998-2823
Application No. 08/458,010
advantage, a patent applicant necessarily discloses that
function, theory or advantage even though he says nothing
concerning it. The application may later be amended to recite
the function, theory or advantage without introducing
prohibited new matter. In re Smythe, 480 F.2d 1376, 1384, 178
USPQ 279, 285 (CCPA 1973).
Although the appellants’ original disclosure does not
expressly describe zinc selenide as a “brittle material,”
appellants argue (main brief, pp. 15-16) that the record
includes evidence that at the time the application was filed
an artisan would have been aware that zinc selenide was a
brittle material. Based on the evidence of record, it is
our determination that the disclosure of the application as
originally filed reasonably conveys to the artisan that
appellants had possession at that time of a window 22 formed
of a brittle material and the recitation of such a window in
claims 17, 26, and 40 does not pose a written description
problem.
Turning next to the examiner's determination that the
terminology “energy,” “energy detector,” “received energy,”
“energy conducting passage,” and “energy conducting member”
8
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