Appeal No. 1999-1162
Application No. 08/427,837
The purpose of the written description requirement under 35 U.S.C. § 112, first
paragraph is to convey with reasonable clarity to those skill in the art, that, as of the filing
date sought, appellants were in possession of the invention now claimed. Vas-Cath Inc. v.
Makurar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). The
description of the invention is provided using descriptive means such as words, structures,
figures, diagrams, formulas, etc. The exact terms need not be used in haec verba.
Lockwood v. American Airlines, Inc., 107 F.2d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed.
Cir. 1997); citing: Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.
Cir. 1995). Thus, as stated above, all that is necessary to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph, is to convey to those skilled in the art,
that, as of the filing date the applicants were in possession of the invention. Vas-Cath Inc.
v. Makurar, supra.
It is the examiner’s position that the term “non-immunopotentiating” in claim 9 is not
supported by the original specification and represents new matter. An applicant may by
amendment make explicit a disclosure which was implicit or inherent in the application as
filed. In re Reynolds, 443 F.2d 384, 389, 170 USPQ 94, 98 (CCPA 1971). The term “non-
immunopotentiating” was added to Example VIII at page 11, line 20 of the specification by
a preliminary amendment (Paper No. 3, April 26, 1995). The use of the term “non-
immunopotentiating” following the term “i.e.” reasonably suggests an equivalent meaning
10
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