Appeal No. 2002-1919 Page 6
Application No. 09/266,376
"’Although [the applicant] does not have to describe exactly the subject matter
claimed, . . . the description must clearly allow persons of ordinary skill in the art to
recognize that [he or she] invented what is claimed.’" Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991) (quoting In re Gosteli, 872
F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)). "[T]he test for sufficiency of
support . . . is whether the disclosure of the application relied upon 'reasonably conveys
to the artisan that the inventor had possession at that time of the later claimed subject
matter.'" Ralston Purina Co. v. Far-Mar-Co., Inc., 772 F.2d 1570, 1575, 227 USPQ 177,
179 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983)). “Application sufficiency under §112, first paragraph, must be
judged as of the filing date [of the application].” Vas-Cath, 935 F.2d at 1566, 19
USPQ2d at 1119 (citing United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d
1247, 1251, 9 USPQ2d 1461, 1464 (Fed. Cir. 1989)).
Here, the appellants' original specification, which includes the original claims,
discloses the aforementioned limitations. Specifically, Figure 12 of the specification
generally "depicts the method by which PCM, thermally coupled to a device, can buffer
and minimize operational temperature excursions during pule power operation." (Spec.
at 17 (emphasis added).) In explaining the depicted method, more specifically, the
specification discloses that "[t]he pulse power device would experience temperature
variations during the time the device were attaining equilibrium temperature. . . ." (Id.
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