Appeal No. 2002-0033 Page 5
Application No. 09/372,020
instant application does not in any way teach or suggest that the location of the
prismatic portion on the exterior surface is critical, essential, required or necessary. We
agree.
The written description requirement serves "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). In order to meet the
written description requirement, the appellant does not have to utilize any particular
form of disclosure to describe the subject matter claimed, but "the description must
clearly allow persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989). Put another way, "the applicant must . . . convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession of the
invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). Finally, "[p]recisely how close the original description must come
to comply with the description requirement of section 112 must be determined on a
case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470
(Fed. Cir. 1995) (quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116).
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