Appeal 2006-3416
Application 10/884,751
as it would be unclear to those skilled in the art what the Appellants meant by “said
projection.” Accordingly, we enter a new ground of rejection of claim 3 under 35
U.S.C. § 112, second paragraph on the ground that the claim fails to particularly
point out and distinctly claim the subject matter that the Appellants regard as their
invention.
Rejection of claims 3, 11-13, and 17-19 under 35 U.S.C. § 112, first paragraph
Independent claim 11 and dependent claims 3, 12, 13, and 17-19 recite an
anastomosis device requiring only a single flange. We reject these claims under 35
U.S.C. § 112, first paragraph, because the written description does not convey to
those skilled in the art that, as of the filing date, the Appellants had possession of
the claimed anastomosis device requiring only a single flange.
“The function of the description requirement [of the first paragraph of 35
U.S.C. 112] is to ensure that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later claimed by him.” In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (citations omitted).
“It is not necessary that the claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in the art that applicant had
invented the subject matter later claimed.” In re Wilder, 736 F.2d 1516, 1520, 222
USPQ 369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985) (citing In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)). “To fulfill
the written description requirement, the patent specification ‘must clearly allow
persons of ordinary skill in the art to recognize that [the inventor] invented what is
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