Appeal No. 2002-0283
Application 09/328,918
rejection, we note that as stated in In re Bowen, 492 F.2d 859,
864, 181 USPQ 48, 52 (CCPA 1974), the description requirement of
35 U.S.C. 112, first paragraph, "is that the invention claimed be
described in the specification as filed." It 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 the applicant had invented the subject matter later
claimed. See In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984). In addition, we note that our Court of
review has also informed us that the drawings included in the
application may aid in the interpretation of claim limitations,
in that the “drawings alone may provide a 'written description'
of an invention as required by § 112.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1556, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). Thus, in those instances where a visual representation
can flesh out words, as in the present application, drawings can
and should be used like the written specification to provide
evidence relevant to claim interpretation and used to interpret
what the inventor intended by the claim terms.
the future, the examiner should carefully review an examiner’s
answer to ensure that it is directed to the issues presented for
appeal.
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