Appeal No. 2006-1509
Application No. 10/206,191
specific subject matter later claimed by him; how the specification accomplishes this is
not material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In
order to meet the written description requirement, the appellant does not have to utilize
any particular form of disclosure to describe the subject matter claimed, but "the
description must clearly allow persons of ordinary skill in the art to recognize that [he or
she] invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,
1618 (Fed. Cir. 1989). Put another way, "the applicant must . . . convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). Finally, "[p]recisely how close the original
description must come to comply with the description requirement of section 112 must be
determined on a case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34
USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d
at 1116). In this case, the examiner has found that the specification, on page 4, identifies
that it is advantageous for the middle or center of the displayed image to correspond to
the position of the surgical instrument. Further, the specification makes no mention of
the position of the surgical instrument being displayed at any location other then the
center of the displayed image. Thus, we find that one of ordinary skill in the art would
recognize from the appellants’ disclosure that appellants, at the time of filing of the
application, had possession of the claimed invention wherein the “image data being
adjustedly inserted to always assure that a center of a displayed image corresponds to an
accurate current position of the surgical instrument.” Accordingly, we will not sustain
the examiner’s rejection of claims 1, 3 through 7, and 9 through 13 under 35 U.S.C. §
112 first paragraph as failing to comply with the written description requirement.
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