Appeal No. 2004-2307
Application No. 09/331,756
New ground of rejection
We enter the following new ground of rejection against the claims in accordance
with 37 CFR § 41.50(b): Claims 38-59 are rejected under 35 U.S.C. § 112, first
paragraph, as the disclosure fails to provide written description for the invention now
claimed.
Each independent claim (e.g., claim 38) requires, inter alia, generating
alphanumeric characters and/or image data separately for plural remote sites at a
central site, and transmitting the data to the remote sites “via a digital data
communication link.” The disclosure does not provide written description for the
invention now claimed.
To comply with the “written description” requirement of 35 U.S.C. § 112, first
paragraph, an 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. The
invention is, for purposes of the “written description” inquiry, whatever is now claimed.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). To “convey with reasonable clarity to those skilled in the art” may also be
expressed in terms of whether the “necessary and only reasonable construction” to be
given the disclosure by one skilled in the art clearly supports the limitation now claimed.
See Hyatt v. Boone, 146 F.3d 1348, 1354, 47 USPQ2d 1128, 1132 (Fed. Cir. 1998)
(“We do not view these various expressions as setting divergent standards for
compliance with § 112. In all cases, the purpose of the description requirement is ‘to
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