Appeal No. 1996-1456
Application No. 08/059,840
disclosed by Young. Neither reference indicates that the use of
such an indent in conjunction with the welding projections
disclosed by Kita would improve the welding process as asserted
by the examiner. It is therefore evident that the only
suggestion for combining Kita and Young with Hitachi Maxell and
Kato in the manner proposed by the examiner stems from
impermissible hindsight knowledge.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of claim 15, or of claims 16 through 20 which
depend therefrom, as being unpatentable over Hitachi Maxell in
view of Kato, Kita and Young.
III. Remand
The application is remanded to the examiner for
consideration of the following matters.
I. Whether the appellants’ original disclosure meets the
written description requirement of 35 U.S.C. § 112, first
paragraph, with respect to the subject matter recited in claims
15 and 16.5 Claim 15 recites a recording medium cartridge
5 The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of
literal support in the specification for the claim language. In
re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). The content of the drawings may also be considered in
determining compliance with the written description requirement.
Id.
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