Appeal No. 1999-0486
Application No. 08/633,389
elements making up the signal compensation circuit -- then the disclosure fails to
support claim 5 as required by 35 U.S.C. § 112, first paragraph.
To comply with the written description requirement of 35 U.S.C. § 112, first
paragraph, an 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. The
invention is, for purposes of the "written description" inquiry, whatever is now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991).
Claim 1 reads on the instant Figure 11 embodiment (described at pages 7 and 8
of the specification) which uses a “digital processor.” Claim 5 lists elements found in
the Figure 2 embodiment (described at pages 5 through 7 of the specification).
However, there is no description of an embodiment which combines the elements from
the separate embodiments. For example, there is no described embodiment which
uses “an A/D converter for digitizing the (R,G,B) signals” (Claim 1) and, additionally,
another “A/D...converter for digitizing the image signal according to a reference voltage”
(Claim 5).
For the reasons above, we reject claim 5 under 35 U.S.C. § 112, second
paragraph, or, in the alternative, under 35 U.S.C. § 112, first paragraph.
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