Appeal No. 2004-0554
Application No. 09/612,394
and the Examiner, for the reasons stated infra, we reverse the
Examiner's rejection of claims 21-40 under 35 U.S.C. § 112, first
paragraph.
The Examiner states that the ground for this rejection is
that claims 21 and 31 have been amended so that an actuator
momentarily moves "the valve to the open position independently
of an upstream portion pressurized fluid pressure." The Examiner
argues that there is no correlation between the dependence or
independence of the valve movement with respect to an upstream
portion pressurized fluid pressure disclosed in the application
as filed. See page 3 of the Examiner's answer.
The first paragraph of 35 U.S.C. § 112 requires that "the
specification shall contain the written description of the
invention[.]" 35 U.S.C. § 112, ¶ 1 (1994). This requires the
Appellant to "convey with reasonable clarity to those skilled in
the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of
the 'written description' inquiry, whatever is now claimed."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). Thus, the inquiry is "'not a
question of whether one skilled in the art might be able to
construct the patentee's device from the teachings of the
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