Appeal No. 2006-1342
Application No. 09/488,471
Turning first to the rejection under 35 U.S.C. §112, first paragraph, the examiner asserts
that the features, “businesses that are selected from an unrestricted pool of merchants” and
“updated cumulative business satisfaction ratings from the users’ off-line surveys or feedback
automatically cause the off-line ranking system to re-index the rating data,” were not described in
the specification and are considered new matter unsupported by the instant disclosure.
The written description requirement is separate from the enablement requirement of 35
U.S.C. 112. It is not necessary that the claimed subject matter be described identically, but that
the originally filed disclosure convey to those skilled in the art that appellant had invented the
subject matter now claimed. Precisely how close the original description must come to comply
with the description requirement must be determined on a case by case basis as a question of fact.
In re Barker, 559 F.2d 588, 591, 194 USPQ 470 (CCPA 1977), cert. denied, 434 U.S. 1064
(1978), sub. nom., Barker v. Parker, 434 U.S. 1064, 197 USPQ 271 (1978); In re Wilder, 736
F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985), sub. nom.;
Wilder v. Mossinghoff, 469 U.S. 105, 105 S. Ct. 1173 (1985).
The test for written description is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventors had possession at that time of the later
claimed subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). An
invention claimed need not be described ipsis verbis in the specification in order to satisfy the
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