Appeal No. 2004-0323 Page 8
Application No. 09/716,045
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. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
In this rejection (second Office action, pp. 2-3), the examiner determined that
there was no written description support for (1) the camera provided within the chamber
being "recessed out of said column of air" as recited in claim 3; and (2) all existing goals
being "recessed within the said wall defining said chamber" as recited in claim 8.
The appellants argue (brief, p. 7) that claims 3 and 8 provide the necessary
written description support and that reference to the goals being recessed is found on
page 9, beginning on line 13.
The disclosure of the application as originally filed does not reasonably convey to
the artisan that the inventors had possession at that time of the subject matter now set
forth in amended claims 3 and 8. Specifically, the application as originally filed does
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007