Appeal No. 2004-1228
Application No. 09/813,088
‘presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims.’” In re Alton, 76 F.3d 1168,
1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996)(citing In re
Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976)).
To satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the disclosure of the application as
originally filed must reasonably convey to those skilled in the
relevant art that the applicant, as of the filing date of the
original application, had possession of the claimed invention.
Alton, 76 F.3d at 1172, 37 USPQ2d at 1581; In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The applicant,
however, does not have to describe exactly the subject matter
claimed. Union Oil Co. of Cal. v. Atlantic Richfield Co. , 208
F.3d 989, 997, 54 USPQ2d 1227, 1232, 1233 (Fed. Cir. 2000).
In the present case, the examiner contends that the
specification does not adequately describe any “provision for a
removably attached blade.” (Nov. 6, 2001 Office action, page 2.)
Specifically, the examiner takes the position that while “one
skilled in the [relevant] art might realize from the reading the
specification that [the] applicant’s proposed interpretation may
be one possibility among others,” this is insufficient for
purposes of satisfying the written description requirement.
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