Appeal No. 2005-1745
Application No. 09/161,680
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
that it reasonably convey to those skilled in the art that, as of the filing date sought, the
inventor was in possession of the claimed invention. Union Oil of California v. Atlantic
Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed. Cir. 2000); Vas-Cath
Inc. v. Mahurkar, 935 F.2d at 1563-64, 19 USPQ2d at 1119; In re Gosteli, 872 F.2d
1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989); In re Edwards, 568 F.2d 1349,
1351-52, 196 USPQ 465, 467 (CCPA 1978).
We find the examiner’s arguments to be misdirected. The problem with respect
to the written description requirement goes to the issue of whether the specification, as
originally filed, provides an adequate written description of the invention as now
claimed. That is, has new matter been added to the claims?
It is well established that when new matter is added to the claims, the proper
course of action is to reject said claims for failing to satisfy the written description
requirement of §112, first paragraph. In re Rasmussen, 650 F.2d 1212, 1214, 211
USPQ 323, 326 (CCPA 1981)(“The proper basis for rejection of a claim amended to
recite elements thought to be without support in the original disclosure, therefore, is §
112, first paragraph ...”). The purpose of the written description requirement is to
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