Appeal No. 98-2086
Application 08/539,353
Claims 3 and 6 are also rejected under 35 U.S.C. § 112,
first paragraph, as being based on a specification which fails
to comply with both the written description and enablement
requirements of this section of the statute. 3
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 disclosure of the appellant's application as
originally filed lacks any basis for the subject matter now
subject matter of parent claim 1 ("An apparatus for locking .
. .). In claim 3, the references to "said first straight
member" lack a proper antecedent basis ("member" should be --
portion-- for consistency with preceding claim terminology).
Finally, claim 3 should end with a period rather than a comma.
3 The written description and enablement requirements of
35 U.S.C. § 112, first paragraph, are, of course, separate and
distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991).
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