Appeal 2007-0278
Application 10/042,047
rejection for claims 3, 9, 15, 21, 29, and 37 pursuant to our authority under
37 C.F.R. § 41.50(b).
Claims 6, 12, and 18
We consider first the Examiner’s rejection of dependent claims 6, 12,
and 18 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
We begin by noting that § 112, first paragraph, of the Patent Act states
that the “specification shall contain a written description of the invention.”
35 U.S.C. § 112. We note that the Court of Appeals for the Federal Circuit
has held that “[t]o fulfill the written description requirement, the patent
specification must describe an invention in sufficient detail that one skilled
in the art can clearly conclude that the inventor invented what is claimed.”
Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967–968, 78 USPQ2d 1257,
1260 (Fed. Cir. 2006) (quoting Cordis Corp. v. Medtronic AVE, Inc., 339
F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed. Cir. 2003)). Our reviewing
court has cautioned, however, that “[t]he disclosure as originally filed does
not … have to provide in haec verba support for the claimed subject matter
at issue.” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d at 1364, 67
USPQ2d at 1885 (internal citation omitted). “Although [the applicant] does
not have to describe exactly the subject matter claimed, … 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) (citations omitted). 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
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