Appeal No. 2004-1231
Application 09/481,224
reasonably conveyed to one having ordinary skill in the art that
an appellant had possession of the now claimed subject matter.
Wang Laboratories, Inc. v. Toshiba Corp., 993 F.2d 858, 865, 26
USPQ2d 1767, 1774 (Fed. Cir. 1993). Adequate description under
the first paragraph of 35 U.S.C. 112 does not require literal
support for the claimed invention. In re Herschler, 591 F.2d
693, 701, 200 USPQ 711, 717 (CCPA 1979); In re Edwards, 568 F.2d
1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978; In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). Rather, it is
sufficient if the originally filed disclosure would have conveyed
to one having ordinary skill in the art that an appellant had
possession of the concept of what is claimed. In re Anderson,
471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA 1973).
Claims 1-20 stand rejected under 35 U.S.C. § 112, first
paragraph, because the Examiner considers the added recitation
“not situated in a CMP apparatus” to be new matter. See Answer,
page 4, last paragraph. The question before us is whether
Appellants had possession of the now claimed subject matter “an
upper platform not situated in a CMP apparatus” and “a lower
platform not situated in a CMP apparatus” in claim 1, and
similarly “a pre-conditioning apparatus not situated in a CMP
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