Appeal No. 2005-0020 Page 3
Application No. 09/572,225
stirrer to a monoaxially rotating stirrer having as mixing elements a member selected from the
group consisting of beams, rods, anchors, grids, blades and propellers.” (Answer, p. 3). The
Examiner also concludes that “positively controlled conveyance” is ambiguous to the extent that
one of ordinary skill would not envisage what types of equipment are encompassed or excluded
by the language (Answer, p. 4).
While the terminology of the claims differs from that of the original specification, we
cannot agree with the Examiner that the claims run afoul of the written description requirement
of 35 U.S.C. § 112, ¶ 1. We, therefore, reverse. Our reasons follow.
OPINION
35 U.S.C. § 112, ¶ 1 (2003) states in relevant part that “[t]he specification shall contain a
written description of the invention.” Our reviewing court and its predecessors have construed
the statute to require that the original written description reasonably convey to one of ordinary
skill in the art that the applicant had possession, at the time of filing, of what is now claimed. In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The claim need not
use the same words as the specification, it is enough that one of ordinary skill in the art would
recognize that the inventor invented what is claimed. Union Oil Co. of Cal. v. Atlantic Richfield
Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed. Cir. 2000). “Adequate description of the
invention guards against the inventor’s overreaching by insisting that he recount his invention in
such detail that his future claims can be determined to be encompassed within his original
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007