Appeal No. 2000-1019
Application No. 08/623,852
“The function of the [written] description requirement is to
ensure that the inventor had possession, as of the filing date of
the application relied on, of the specific subject matter later
claimed by him; how the specification accomplishes this is not
material.” In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976).
To satisfy the written description requirement, the
disclosure of the application as originally filed must reasonably
convey to the artisan that the inventor had possession at that
time of the later claimed subject matter. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). It is not
necessary that the application describe the claim limitations
exactly, but only so clearly that persons of ordinary skill in
the art will recognize from the disclosure that applicants
invented the claimed subject matter. In re Wertheim, 541 F.2d
at 262, 191 USPQ at 96.
“[P]recisely how close the original description must come to
comply with the written description requirement of § 112 must be
determined on a case-by-case basis.” Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1561, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). The
examiner bears the initial burden of presenting a prima facie
case of unpatentability. In re Alton, 76 F.3d 1168, 1175,
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