Appeal No. 2006-2458
Application No. 10/147,673
sufficient detail to satisfy the statutory requirements, employing “[w]ords,
structures, figures, diagrams, formulas, etc., that fully set forth the claimed
invention.” Space Systems/Loral, Inc. v. Lockheed Martin Corp., 405 F.3d
985, 987, 74 USPQ2d 1534, 1535 (Fed. Cir. 2005) (quoting Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed.
Cir. 1997)). 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 the instant case, we will sustain the examiner’s rejection under 35
U.S.C. § 112, first paragraph because the example proffered by appellant
does not affirmatively disclose that the other entity values that were not
presented to the user are not set [page 22, line 33 through page 23, line 6
of the instant specification]. In particular, we note that the disputed
negative limitations for claims 1 and 15 were added by an amendment to
the claims that was filed on March 14, 2005. While literal support is not
required, we nevertheless find that appellant has failed to convey with
reasonable clarity to those skilled in the art that he or she was in possession
of the invention as of the filing date sought. We agree with the examiner
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