Appeal No. 2003-0124
Application No. 09/487,832
(Fed. Cir. 1991). Thus, we will treat these two issues
separately.
"The function of the description requirement [of the first
paragraph of 35 U.S.C. § 112] is to ensure that the inventor had
possession, as of the filing date of the application relied on,
of the specific subject matter later claimed by him." In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). "It is
not necessary that the application describe the claim limitations
exactly, . . . but only so clearly that persons of ordinary skill
in the art will recognize from the disclosure that appellants
invented processes including those limitations." Wertheim,
541 F.2d at 262, 191 USPQ at 96 citing In re Smythe, 480 F.2d
1376, 1382, 178 USPQ 279, 284 (CCPA 1973). Furthermore, the
Federal Circuit points out that "[i]t 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 applicant had invented the subject matter later
claimed." In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372
(Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985), citing In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
88
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