Appeal No. 2004-0545
Application No. 09/510,569
decoupling as claimed in independent claim 1, 5 and 17.3 Accordingly we will not
sustain the examiner’s rejection of claims 1 through 8 and 17 through 20 under
35 U.S.C. § 102.
New grounds of rejection under accordance with 37 CFR § 41.50(b).
We find that appellants specification, as originally filed does not provide
support for the limitation of “decoupling said data processing system from said
server data processing system after a completion of a hardware setup operation”
as is claimed in each of independent claim 1, 5 and 17. Thus, we now reject
claims 1 through 8 and 17 through 20 under 35 U.S.C. § 112, first paragraph.
The written description requirement serves "to ensure that the inventor
had possession, as of the filing date of the application relied on, of the specific
subject matter later claimed by him; how the specification accomplishes this is
not material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976). In order to meet the written description requirement, the appellant does
not have to utilize any particular form of disclosure to describe the subject matter
claimed, but "the description must clearly allow persons of ordinary skill in the art
to recognize that [he or she] invented what is claimed." In re Gosteli, 872 F.2d
1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put another way, "the
applicant must . . . convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, he or she was in possession of the invention."
3 We note the issue of whether the decoupling may be obvious in light of a secondary
reference is not before us.
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