Appeal No. 95-4344
Application 08/087,030
The test for 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).
Here, the disclosure of the appellants’ application as originally filed would not reasonably
convey to the artisan that the appellants had possession at that time of a conduit having a discrete end
section which is both slightly tapered and in face-to-face contact with the first main portion of the
immediately adjacent turn as is now recited in claim 20.
In summary and for the above reasons:
a) the decision of the examiner to reject claims 18 through 31 under 35 U.S.C. § 103 is
reversed; and
b) new rejections of claims 18 through 20, 22 and 24 through 31 are entered pursuant to 37
CFR § 1.196(b).
This decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b)(amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A
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