Appeal No. 2003-1105 Page 5
Application No. 09/738,461
change in conductivity can be measured.” In addition, the examiner finds (id.),
“the specification is silent on how … digested probe with the ionic label may be
distinguished electronically from undigested probe bearing the label, or how this
is to be accomplished via release of the label from the probe.” Accordingly, the
examiner rejected claims 1-9 under the written description provision of 35 U.S.C.
§ 112, first paragraph, “as containing subject matter which was not described in
the specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s) … had possession of the claimed invention.”
In our opinion, however, the reasoning underlying this rejection is not that
of a written description rejection but instead would appear to be more
appropriate for a rejection based on the enablement provision of 35 U.S.C.
§ 112, first paragraph. The test for compliance with written description provision
of 35 U.S.C. § 112, first paragraph has always required sufficient information in
the original disclosure to show that the inventor possessed the invention at the
time of the original filing. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561,
19 USPQ2d 1111, 1115 (CAFC 1991). As appellants explain (Brief, page 9),
ionic probes are known and while appellants are “not required to describe in
detail that which is known,” their “specification does describe an ‘ionically labeled
probe’, as set forth on page 5, beginning at line 11 and illustrated in Figure 1.”
As set forth in Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997,
54 USPQ2d 1227, 1232 (Fed. Cir. 2000), citation omitted, “[t]he written
description requirement does not require the applicant ‘to describe exactly the
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