Appeal No. 1995-1703
Application 07/897,304
It is not apparent, nor do the appellants even contend,
that their disclosure provides anything approaching express
support for the recitation in claim 21 that the elongation
value of the outer tubing is a “maximum destructive”
elongation value. Instead, the appellants seem to argue that
the disclosure as a whole provides inherent support for this
recitation. Claim limitations which are urged to be inherent
in the disclosure must be shown as having clear support from
the necessary and only reasonable construction to be given the
disclosure by one skilled in the art. Kennecott Corp. v.
Kyocera Int'l, Inc., 835 F.2d 1419, 1423, 5 USPQ2d 1194, 1198
(Fed. Cir. 1987). The appellants have failed to advance any
evidence or cogent line of argument to this effect.
Therefore, on the record before us, we are constrained to
conclude that the disclosure of the application as originally
filed would not reasonably convey to the artisan that the
appellants had possession at that time of the subject matter
now recited in claim 21.
Accordingly, we shall sustain the standing 35 U.S.C. §
112, first paragraph, rejection of claim 21 as being based on
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