Appeal No. 2005-1953 Page 4
Application No. 09/765,533
OPINION
Rejection under 35 U.S.C. § 112
It is well settled that a specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, the inventor was in possession of the
invention. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467
(CCPA 1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
It is the Examiner's position that subject matter of claim 23 is not described in
1
the specification. (Answer, p. 6).
In response to this rejection, Appellant has argued and presented two
2
declarations to establish that “markers” are described in the drawings of the present
3
specification and the provisional applications. Appellant argues that the indicia 54, 56
1Specifically, the Examiner asserts that subject matter appearing in lines 10-18 of claim 23 is not
described in the specification.
2Appellant presented the declaration of Cam panella and the declaration of Ferris. (Attached to
the Brief as exhibits F and G respectively).
3Application numbers 60/177,512 and 60/229,868.
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