Appeal No. 1999-2141
Application No. 08/657,164
The examiner fails to establish a prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In view of the above, the rejection of claims 8-11 is reversed.
35 U.S.C. § 112, first paragraph
Claims 8-10 stand rejected under 35 U.S.C. § 112 first paragraph, as containing
subject matter which was not described in the specification in such a way as to reasonably
convey to one skilled in the art that the inventors had possession of the claimed invention
at the time the application was filed. The examiner finds that the claim term “in a single
pass” in claim 8 is not supported by the original disclosure.
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.
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