Appeal No. 2001-0476
Application No. 08/768,231
IV. Sustaining 35 U.S.C. § 112, first paragraph rejection
Now we turn to the rejection of claims 46 through 53 under
35 U.S.C. § 112, first paragraph. "The function of the
description requirement [of the first paragraph of 35 U.S.C.
§ 112] 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." In re Wertheim, 541 F.2d 257, 262,
191 USPQ 90, 96 (CCPA 1976). "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 [A]ppellants invented the
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). Furthermore, the Federal Circuit
points out that "[i]t is not necessary that the claimed subject
matter be described identically, but the disclosure originally
filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed." In re Wilder,
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