Appeal No. 2000-2267
Application No. 08/764,576
As such, we are convinced that a skilled artisan would recognize
and appreciate that such a structural interconnection would not
prevent the shaft from turning if the turbine housing is mounted
to another housing such as a generator housing. "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 appellants
invented processes including those limitations." Wertheim, 541
F.2d at 262, 191 USPQ at 96 citing In re Smythe, 480 F.2d 1376,
1382, 178 USPQ 279, 284 (CCPA 1973).
In our opinion, under the factual situation presented in the
present case, Appellants have satisfied the statutory written
description requirement because they were clearly in possession
of the claimed invention at the time of filing of the
application. Therefore, the Examiner’s rejection of claims 1-10
based on the “written description” requirement of the first
paragraph of 35 U.S.C. § 112 is not sustained.
We next consider the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claims 1-10 under the “enablement”
requirements of the statute. We note that, while the Examiner
has made a separate insufficient disclosure under the “enabling”
clause of the statute, the underlying rationale for the rejection
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