Appeal No. 1999-1651
Application No. 08/775,308
embodiments may also evidence a lack of realization that portions of an invention may
be combined for a new or different invention which appellants did not have in his
possession at the time of filing. Here, we agree with the appellants that appellants did
have the invention as claimed in his possession at the time of filing.
Specifically, the examiner stated that the limitation “plurality of first terminals
each having a first end and a second end, at least one first end electrically connected to
said at least one power device” was not supported by the specification. (See final
rejection at page 3, line 1.) Appellants argue that the “specification as a whole conveys
to a person of ordinary skill in the art that the above limitation is part of what Applicants
intended to invent at the time of filling [sic].” (See brief at page 9.) (Emphasis added.)
We agree with appellants that the specification as a whole may provide support, but we
disagree with appellants that it does not extend to what appellants intended, but only
what appellants did invent and disclose. Appellants may have intended many things,
but did not adequately disclose them. It is the disclosure itself and not the intent to
disclose which we evaluate. Here, the language of claim 41 requires “a plurality of first
terminals each having a first end and a second end, at least one first end electrically
connected to said at least one power device.” Here, we agree with appellants that
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