Appeal No. 2004-0358 Page 6
Application No. 08/997,748
passages in the original specification, not directly related to each other, we invite
attention to the following in Lockwood v. American Airlines Inc., 107 F.3d 1565,
1571-1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997):
It is the disclosures of the applications that count. Entitlement to a filing
date does not extend to subject matter which is not disclosed, but would
be obvious over what is expressly disclosed. It extends only to that which
is disclosed.
and
The question [under the written description requirement of 35 U.S.C.
§ 112, first paragraph] is not whether a claimed invention is an obvious
variant of that which is disclosed in the specification.
and
One shows that one is “in possession” of the invention by describing the
invention, with all its claimed limitations, not that which makes it obvious.
See In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975)("[t]hat a
person skilled in the art might realize from reading the disclosure that such a step is
possible is not a sufficient indication to that person that that step is part of appellants'
invention. Such an indication is the least that is required for a description of the
invention under the first paragraph of § 112.")
The rejection of claims 94 through 96 and 100 through 118 under 35 U.S.C.
§ 112, first paragraph (written description) is affirmed.
35 U.S.C. § 103(a)
According to the examiner, applicants’ claimed method would have been obvious
at the time the invention was made to a person having ordinary skill in the art in view of
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