Appeal No. 2004-0283
Application No. 09/12,638
uncoated copper foil sheet as well as laminates having both
copper foil sheets coated" (page 3 of Answer), and appellants'
specification only discloses and depicts both copper sheets being
coated with epoxy resin film, the appealed claims lack
descriptive support in the specification.
As our reviewing court stated in In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089 1096 (Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of
the application as originally filed reasonably conveys
to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than
the presence or absence of literal support in the
specification for the claim language.
It is well settled that the claimed invention does not
necessarily have to be expressed in ipsis verbis in order to
satisfy the written description requirement, i.e., it may be
implicit from the original specification that the inventor had
possession of the claimed subject matter at the time of filing
the application. An explicit description is not required.
In the present case, while we are fully appreciative and
cognizant of the effort made by the examiner in advancing a
rationale in support of the rejection, we are persuaded that the
facts of this case support the conclusion that the present
inventors, at the time of filing the application, had in their
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