Appeal No. 99-0920
Application No. 08/629,323
With this test in mind, we consider first the appellants’
argument that “the term ‘curvilinear’ is not new matter since
persons skilled in the art would be enabled by the original
specification to practice the invention with patterns other
than annular ones” (brief, page 7). The deficiency of this
argument is apparent. That is, the argument is simply not
relevant to the above noted test for written description
compliance. Indeed, it is well settled that a specification
may contain disclosure which is sufficient to enable one
skilled in the art to make and use the invention yet fail to
comply with the written description requirement. In re
Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977),
cert. denied, 434 U.S. 1238 (1978).
The appellants also argue that “annular adhesive zones
fall within the definition of ‘curvilinear adhesive zones’ and
therefore provide [descriptive] support for the claim language
‘curvilinear adhesive zones’” (brief, page 7). This argument
is similarly deficient in that it is founded upon an
inappropriate, overly-broad test. This is because a
specification which discloses a specific shape embodiment (in
this case, “annular adhesive zones”) does not inherently or
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