Appeal No. 1999-0253
Application No. 08/636,206
well known in the art as of the original filing date and the
examiner has not contested this assertion (Answer, page 12).2
Ipsis verbis disclosure is not necessary to satisfy the
written description requirement of section 112. The
disclosure need only reasonably convey to persons skilled in
the relevant art that the inventor had possession of the
subject matter in question. See In re Edwards, 568 F.2d 1349,
1351-52, 196 USPQ 465, 467 (CCPA 1978). The examiner has not
met the initial burden of proof by failing to provide reasons
why one of ordinary skill in the stent art would not consider
the description (at page 5, ll. 2-5, of the specification) in
addition to the knowledge in the art that active sense
expandable stents were conventional sufficient to reasonably
convey that appellant was in possession of the subject matter
in question. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d
1578, 1583 (Fed. Cir. 1996).
For the foregoing reasons, the rejection of the claims on
appeal under the first paragraph of 35 U.S.C. § 112 is
reversed.
2As an example of active sense expanding stents, see the
prior art discussed by MacGregor at col. 2, ll. 24-50.
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