Appeal No. 2006-1692 Παγε 5
Application No. 10/068,243
application relied on, of the 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).
The examiner’s position (answer, page 3) is that the term
“homogenous” constitutes new matter. The examiner notes that
although the original specification has support for the term
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