Interference No. 104,693
Preputnick v. Provencher
24. The placement of a conduction ground shield along one
side of a terminal module to define a shielded terminal module
was well known to one of ordinary skill in the art by March 1995.
See T 22 of the Granitz declaration.
Discussion
A. Preiputnick's Preliminary Motion 3
By this preliminary motion, Preputnick seeks to have all of
Provencher's claims corresponding to the count, claims 17-19,
held unpatentable under 35 U.S.C. § 112, first paragraph, as
lacking written description in the specification.
The 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. Vagı-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). One
shows that one is 'in possession" of the invention by describing
the invention, with all its claimed limitations, not that which
makes it obvious. Lockwood v. American Airlines, Inc., 107 F.3d
1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re
Werthei , 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
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