Appeal 2006-0899
Application 09/912,290
jurisprudence which does not require an express written descriptive support.
See Kaslow, 707 F.2d at 1375, 217 U.S.P.Q. at 1096 (“The test for
determining compliance with the written description requirement is whether
the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language.”); In re Wertheim, 541 F.2d 257, 265,
191 U.S.P.Q. 90, 98 (C.C.P.A.)( In order to satisfy the written description
requirement, the application disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.). In
the second place, Grasselli is limited to a situation where a negative
limitation introduces a new concept in violation of the written description
requirement of the first paragraph of 35 U.S.C. § 112. See Grasselli,
231 U.S.P.Q. at 394, citing Anderson, 471 F.2d at 1244, 176 U.S.P.Q. at
336.
Having determined that the Examiner has not demonstrated that the
application disclosure as originally filed does not reasonably convey to one
of ordinary skill in the art the claimed subject matter at issue, we reverse the
examiner’s decision rejecting of claims 1 through 9 under 35 U.S.C. § 112,
first paragraph, based on written description.
2. ANTICIPATION
As set forth in Gechter v. Davidson, 116 F.3d 1454, 1457,
43 U.S.P.Q.2d 1030, 1032 (Fed. Cir. 1997):
Under 35 U.S.C. §102, every limitation of a
patent claim must identically appear in a single prior
art reference for it to anticipate the claim.
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