Appeal No. 2006-1246 Page 5
Application No. 09/726,372
melt point of the polypropylene. This is implicit disclosure in applicants'
specification. Original independent process Claim I, for example, did not
recite increasing the crystalline melt point temperature of the
polypropylene, so the temperature (of the surface of polypropylene and
the acid-modified polypropylene) had to be below the crystalline melt
point temperature of the polypropylene. In this manner, applicants'
process is substantially and unobviously different from the process of
Takano et al." [Page 10, line 26, to page 11, line 15]
Upon careful examination of the drawings, the specification and Appellants=
arguments we conclude that the person of ordinary skill in the art would readily
correlate the points of intersection of the first lines and second lines as markers,
identified by Appellants as indicia 54, 56 and 58.
We determine that the disclosure as originally filed does not reasonably convey
to one of ordinary skill in the art that Appellants, was in possesion of the invention as
presently claimed.
The written description requirement of ' 112, first paragraph, entitles the
Appellants to claim only that which is disclosed in application, and does not extend to
subject matter which is not disclosed, 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 Appellants argue that the disputed subject matter
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