Appeal No. 2005-0167 Page 3
Application No. 10/272,722
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 47, 54 and 60 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description requirement. We
note initially that the test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the specification
for the claim language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983).
The examiner is of the opinion that the specification fails to convey that the
appellants had possession of subject matter recited in the claims directed to storing an
image on a player tracking card and comparing an image on a tracking card with a
captured image. The examiner recognizes that page 3, lines 13 to 16 of the
specification states that images captured may be used for verification when a player
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