Ex Parte Howlett-Campanella - Page 7




               Appeal No. 2005-1953                                                                     Page 7                  
               Application No. 09/765,533                                                                                       


                        The written description requirement of § 112, first paragraph, entitles the                             
                Appellant to claim only that which is described in the application, and does not extend                         
                to subject matter which is not described, but would be obvious over what is expressly                           
                disclosed.  Cf. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572,  41                                   
                USPQ2d 1961, 1966 (Fed. Cir. 1997); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,                                   
                1563-64,  19 USPQ2d 1111, 1117 (Fed. Cir. 1991)("[T]he applicant must also convey                               
                to those skilled in the art 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.") .  In the present case, Appellant has not directed us to                             
                evidence in the specification, as originally filed, or in the provisional applications that                     
                describes the lines added to the “marked up” figure 8 to form the claimed rectangles.                           
                We have not been directed to portions of the record that explain why the lines (of only                         
                                                                                                      6                         
                figure 8) should be extended to connect so as to form the claimed rectangles.   While                           
                it might have been obvious to extend the lines as Appellant has presented in “marked                            
                up” figure 8 this is not the proper standard for determining if the record provides an                          
                adequate written disclosure.  In view of the above, the application as originally filed                         
                and the provisional applications do not provide descriptive support for claim 23 in the                         
                manner provided for in the first paragraph of § 112.                                                            


                      6Appellant has not directed us to portions of the record which discloses that the first lines and         
               second lines of figure 8 should be extended but not the diagonal lines contained therein.                        






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