Appeal No. 2005-2695
Application No. 10/280,926
the brief (filed Dec. 20, 2004) and reply brief (filed Apr. 28, 2005) for appellants’
arguments there against.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
Only those arguments actually made by appellants have been considered in this
decision. Arguments that appellants could have made but chose not to make in the brief
have not been considered. We deem such arguments to be waived by appellants [see
37 CFR § 41.37(c)(1)(vii) effective September 13, 2004 replacing 37 CFR § 1.192(a)].
35 U.S.C. § 112, First Paragraph
The written description inquiry is a factual one and must be assessed on a
case-by-case basis. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991) (quoting In re Smith, 458 F.2d 1389, 1395, 173
USPQ 679, 683 (CCPA 1972) (“Precisely how close the original description must come
to comply with the description requirement of § 112 must be determined on a
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