Appeal No. 2001-2671 Page 6
Application No. 09/258,155
As to the rejection based on the description requirement,3
the examiner has not set forth any explanation whatsoever for
this rejection. In that regard, the examiner has not set
forth the claimed subject matter which the examiner believed
was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the
appellants, at the time the application was filed, had
possession of the claimed invention. Accordingly, we cannot
sustain the rejection of claims 1, 3 to 5 and 7 under 35
U.S.C. § 112, first paragraph, based upon the description
requirement.
3The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
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