Appeal No. 2005-0433
Application No. 09/982,481
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). For purposes of written description, one shows “possession” by descriptive
means such as words, structures, figures, diagrams, and formulas that fully set forth the
claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41
USPQ2d 1961, 1966 (Fed. Cir. 1997). We do not find such descriptive means in the
disclosure for the inventions of claim 31 and claim 32.
CONCLUSION
The rejection of claims 1-30 under 35 U.S.C. § 102 is affirmed. The rejection of
claims 31 and 32 under 35 U.S.C. § 103 is reversed, pro forma.
New rejections of claims 31 and 32 under 35 U.S.C. § 112, first and second
paragraph are set forth herein.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007