Appeal 2007-2916
Application 10/225,502
artisan that [Appellants] had possession at that time of the later claimed
subject matter." In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). Precisely how close the original description must come to
comply with the description requirement of § 112 must be determined on a
case-by-case basis. In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683
(CCPA 1972). For example, in Wertheim, the court held that a new claim
limitation to "at least 35%" did not satisfy the description requirement
because the phrase "at least" had no upper limit and caused the claim to read
on embodiments outside the "25-60%" range described in the original
specification, but a claim limitation to "between 35% and 60%" did satisfy
the description requirement. Wertheim, 541 F.2d at 265, 217 USPQ at 97-
98.
Boron nitride and alumina ranges of "25% to 60% by volume" in the
thermally conductive composition are described in Appellants' specification
as filed (FF 3). The claims on appeal recite boron nitride and alumina
ranges of "25% to 35% by volume" (Br.5 18). According to the Examiner,
"any new point (35%) must have support in the originally filed specification.
See, In re Wertheim, 191 USPQ 90-106, CCPA 1976." [Answer 4.] It
appears that the Examiner's concern is that Appellants' specification does not
explicitly recite boron nitride and alumina ranges of "25% to 35% by
volume." However, a specification need only reasonably convey to one of
skill in the art, in any manner, that a later added claim limitation was part of
applicant's invention. Thus, the question here is whether, on the facts, the
Examiner has presented sufficient reason to doubt that the broader ranges of
boron nitride and alumina described in the specification also describes the
5 Appellant's Brief filed 22 November 2006 ("Br.").
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