Appeal No. 2001-1087
Application 08/660,616
determined. We do not, however, agree with the appellants that
it is “explicitly or inherently disclosed” in the originally
filed disclosure that the claimed actions will be taken after the
noted total costs are determined. We agree with the examiner
that the originally filed disclosure lacks support for such
specific actions made in response to the total cost deter-
minations. Appellants cannot rely on the knowledge of the
skilled artisan to supply the written description support for
the noted claimed subject matter because the mere fact “[t]hat
a person skilled in the art might realize from reading the
disclosure that such a step is possible is not a sufficient
indication to that person that that step is part of appellants’
invention.” In re Barker, 559 F.2d 588, 593, 194 USPQ 470, 474
(CCPA 1977), cert. denied, 434 U.S. 1064 (1978). Accordingly,
the lack of written description rejection of claims 1 and 9 is
sustained. The lack of written description rejection of claims
2, 4 through 6, 8, 10, 13 through 15, 17 and 18 is likewise
sustained because of the dependency of these claims from the
base claims 1 and 9.
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