Appeal No. 2005-1216
Application No. 10/117,453
Background and Discussion
As indicated by the claims above, the present invention is directed to a sample
holder. According to the specification, the sample holder is useful “for chemical analysis
and synthesis of samples and more specifically ... for holding and maintaining
separation of multiple samples during chemical analysis or synthesis process.”
Specification, p. 1. The present sample holder is said to overcome “many of the
problems of convention[al] sample holders. . . [in that it] . . supports a multiplicity of
samples on a small space, while permitting physical separation of these samples.” Id.,
p. 4, lines 18-21. The specification discloses that the sample holder is useful for, inter
alia, matrix-assisted laser desorption ionization (MALDI) analysis. Id.,
p. 16, lines 20-21; p. 18, lines 10-11.
I. Written description
The examiner argues that the specification, as originally filed, does not provide
an adequate recitation of “non-removable” islands. Answer, p. 4. According to the
examiner, “this limitation is viewed as new matter.” Id.
To satisfy the written description requirement, the inventor “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.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). However, it is not necessary for the
specification to describe the claimed invention ipsissimis verbis; all that is required is
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007