Appeal No. 2003-2074
Application No. 09/095,325
The written description requirement is separate from the
enablement requirement of 35 U.S.C. 112; it is not necessary that
the claimed subject matter be described identically but that the
originally filed disclosure convey to those skilled in the art
that appellant had invented the subject matter now claimed.
Precisely how close the original description must come to comply
with the description requirement must be determined on a case by
case basis as a question of fact. In re Barker, 194 USPQ 470
(CCPA 1977), cert den., sub. nom., Barker v. Parker, 197 USPQ 271
(1978); In re Wilder, 222 USPQ 369 (Fed. Cir. 1984), cert den.,
sub. nom.; Wilder v. Mossinghoff, 105 S. Ct. 1173 (1985).
Turning, first, to the issue regarding claims 104, 105, and
109-114, as to an adequate written description for the claimed
“forwarding component associated with a host system,” we will not
sustain the rejection under 35 U.S.C. § 112, first paragraph,
because we do not believe the examiner had a reasonable basis for
finding no support for the claimed “forwarding component.” It is
clear from page 8 of the specification that the communication
server 220 is associated with the post office host server 240
since this portion of the specification states that the email
post office is coupled to VSM 230 (which is part of the
communication server 220 as seen in Figure 2) “either as another
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