Appeal 2007-2127
Reexamination Control No. 90/006,621
[under § 132]." Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1578 n.11,
222 USPQ 833, 836 n.11 (Fed. Cir. 1984) (citing In re Rasmussen,
650 F.2d 1212, 211 USPQ 323 (CCPA 1981)).
To satisfy the written description requirement, "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). Thus, "[t]he possession test requires assessment from the viewpoint
of one of skill in the art." Moba, B.V. v. Diamond Automation, Inc.,
325 F.3d 1306, 1320, 66 USPQ2d 1429, 1439 (Fed. Cir. 2003). "One shows
that one is 'in possession' of the invention by describing the invention, with
all its claimed limitations, not that which makes it obvious." Lockwood v.
American Airlines, 107 F.3d at 1572, 41 USPQ2d at 1966. "Although the
exact terms need not be used in haec verba, . . . the specification must
contain an equivalent description of the claimed subject matter." Id.
Facts
The facts are discussed in connection with each limitation.
Analysis
The Examiner's rejection identifies 37 groups of claims.
1. Group 1
The Examiner finds that there is no written description support for the
new limitation of an "input device with controlling software to input data
into the system" in claim 14 (Final Rejection 24 ¶ II.3(A)). The Examiner
finds that the '604 patent discloses editor and compiler software, but not a
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