Appeal No. 2006-0369 Παγε 5
Application No. 10/225,395
Rejection under § 112, first paragraph
We note that whether a specification complies with the
written description requirement of 35 U.S.C. § 112, first
paragraph, is a question of fact. Gentry Gallery Inc. v.
Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1502 (Fed.
Cir. 1998); In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583
(Fed. Cir. 1996). The test for determining compliance with the
written description requirement of 35 U.S.C. § 112, first
paragraph, is whether the disclosure of the application as
originally filed would have reasonably conveyed to one of
ordinary skill in the art that the inventor had possession of the
later claimed subject matter. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). The
subject matter of the claims need not be described identically or
literally for the application to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
However, the description of the invention must be sufficiently
clear that one of ordinary skill in the art would have recognized
from the disclosure that the applicants invented the later
claimed subject matter. In re Wertheim, 541 F.2d 257, 262,
191 USPQ 90, 96 (CCPA 1976).
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