Appeal No. 2004-2355
Application No. 09/935,721 Page 8
In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976).
"Precisely how close the original description must come to comply
with the description requirement of § 112 must be determined on a
case-by-case basis." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1562, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
Here, the examiner simply has not made the case as to why
the so rejected claims would have been construed as describing
possession of a new concept or invention not conveyed by the
original disclosure for the reasons set forth above.
Consequently, on the present record, we find ourselves in
agreement with appellant's basic position that the original
disclosure reasonably conveys to the ordinarily skilled artisan
that appellant had possession of the claimed subject matter, a
position that the examiner has not effectively challenged by
presenting a persuasive rationale for the stated rejection.2
Therefore, the rejection under § 112, first paragraph, with
regard to the alleged lack of descriptive support for the claims
on appeal cannot be sustained.
2 Because the examiner has not furnished a prima facie case
of a lack of descriptive support under § 112, first paragraph, we
need not address the two patents referred to by appellant in
rebuttal at page 5 of the brief.
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