Appeal No. 2002-0009
Application 09/032,554
The test for determining compliance with the written
description requirement of the first paragraph of 35 U.S.C. § 112
is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventors had
possession at that time of the later claimed subject matter. See
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983) and Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991). In this regard, we note that
it is not necessary that the claimed subject matter under
consideration be described identically in the specification, but
the disclosure as originally filed must convey in some way to
those skilled in the art that the applicants had at the time of
filing invented the subject matter claimed. See, In re Wilder,
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984) and In re
Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989). Thus, we recognize that a finding of an adequate written
description under the first paragraph of 35 U.S.C. § 112 does not
require literal support for the now claimed terminology in the
originally filed specification. Precisely how close the original
description must come to comply with the description requirement
of 35 U.S.C. § 112, first paragraph, must be determined on a
case-by-case basis.
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