Appeal No. 2006-1746
Application No. 10/375,679
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).
ANALYSIS (ISSUE I)
From Fact 1 we find that the system including hub 11 is described as being
in accordance with various embodiments of the invention, which we consider to be
more than the embodiment of Fig. 1. From Fact 2 we find that the hub described in
Fig. 2 is in accordance with an embodiment of the invention, not all embodiments.
From Fact 3 we find that Fig. 6 is directed to another embodiment of the invention.
From Fact 4 we find that in some embodiments the display is separate or separable
from both the stimulator and the needle. From the disclosure of the display being
separate or separable from "both" the stimulator and the needle, we find that in
some embodiments the display is separate from both the stimulator and the needle.
From Fact 6 we find that the "displays" refers to the plural displays on the hub 11,
as shown in Fig. 4. From review of the record, we find that the originally filed
disclosure describes embodiments where the display is on the hub or where the
display is separate from the needle and the stimulator. However, we find no
description of an embodiment where displays are both remote from the nerve
stimulator and rigidly coupled to the nerve stimulator needle. Accordingly, from
all of the above, we agree with the Examiner for the reasons advanced in then
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