Appeal No. 2003-0540 Page 5
Application No. 09/737,001
by the disclosure." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976)
(emphasis added). The written description requirement does not require the appellant
"to describe exactly the subject matter claimed, [instead] the description must clearly
allow persons of ordinary skill in the art to recognize that [he or she] invented what is
claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989)
(citations omitted). Thus, the written description requirement of paragraph one of 35
U.S.C. § 112 ensures that, as of the filing date, the inventor conveyed with reasonable
clarity to those of skill in the art that he or she was in possession of the subject matter
of the claims. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). However, claims added by a preliminary amendment to
an application must find adequate support in the original disclosure of the application to
meet the description requirement of 35 U.S.C. § 112, first paragraph. See In re
Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975).
In the written description rejection before us in this appeal, the examiner
determined that the following limitations did not find written description support in the
original disclosure: (1) the outer layer of the cover being formed of a first ionomer resin
having a Shore D hardness of 40 to 49 as recited in claims 9 and 10; and (2) the
difference in hardness between the first and second ionomer resins being at least 5 in
Shore D hardness as recited in claims 9 and 10. In addition, the examiner determined
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