Appeal No. 2003-1280 10
Application No. 09/476,633
KRATZ, Administrative Patent Judge, concurring-in-part and dissenting-in-part.
I concur with the majority’s decision to the extent they have affirmed the examiner’s
decision to reject claims 1-5, 7, 9-12, 15, 18, 19 and 26-28 under 35 U.S.C. § 102(e) as
anticipated by Kishii and to reject claims 6, 8, 13, 14, 17 and 20-22 under 35 U.S.C. § 103
as unpatentable over Kishii. However, I respectfully dissent from the majority’s decision to
affirm the examiner’s rejection of claims 23-25 as lacking descriptive support within the
meaning of the first paragraph of 35 U.S.C. § 112.
With regard to written descriptive support, all that is required is that appellants’
specification reasonably conveys to one of ordinary skill in the art that as of the filing date of
the application, appellants were in possession of the presently-claimed invention; how the
specification accomplishes this is not material. See In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-2, 196 USPQ
465, 467 (CCPA 1978).
“[T]he PTO has the initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the invention defined
by the claims.” In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976).
"Precisely how close the original description must come to comply with the description
requirement of § 112 must be determined on a case-by-case basis." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
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