Appeal No. 2004-0214 Page 6
Application No. 09/446,516
Accordingly, the phrase is definite and does not violate the second paragraph of 35
U.S.C. § 112.
For the reasons set forth above, the decision of the examiner to reject claims 1 to
20 and 34 under 35 U.S.C. § 112, second paragraph, is reversed.
The written description rejection
Claims 1 to 20 and 34 stand rejected under 35 U.S.C. § 112, first paragraph, as
the specification, as originally filed, does not provide support for the invention as is now
claimed.
The written description requirement serves "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; how the specification accomplishes this is not material." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
written description requirement, the appellants do not have to utilize any particular form
of disclosure to describe the subject matter claimed, but "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).
Put another way, "the applicant must . . . convey with reasonable clarity to those skilled
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