Appeal No. 95-2768
Application 08/019,700
on the supporting arm, but merely served as an indicia or detent,
showing that the cradle was in a particular position on the arm.
We find no basis in the application as filed for this argument.
To comply with the written description requirement of § 112,
first paragraph, the application must convey with reasonable
clarity to those skilled in the art that, as of its filing date,
the applicant was in possession of the invention now claimed.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). The present application would not
convey to one of ordinary skill that appellants were in
possession of an invention which included a cradle rotatable
about the axis of the supporting arm, but rather would convey the
opposite, i.e., a cradle which was not rotatable about the
supporting arm, but rather was retained ?in a prescribed
circumferential position on the supporting arm?, as stated on
page 10 of the specification (quoted above).
Conclusion
The examiner’s decision to reject claims 14, 17, 18 and 28
to 30 is reversed. Claims 28 to 30 are rejected pursuant to 37
CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to
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