Appeal No. 2000-1763 Page 4
Application No. 09/227,037
of the first paragraph of 35 U.S.C. § 112 and the new matter prohibition of the first paragraph
of 35 U.S.C. § 251.
As the court stated in In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983):
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 claimed language. The content of the drawings may also be
considered in determining compliance with the written description requirement.
(citations omitted)
The examiner's position, in essence, is that the appellant's originally filed written
disclosure only describes a process that requires first and second dies (answer, page 4).
According to the examiner, the broadest description of the process (column 2, lines 14-19)
requires both first and second dies. This description reads as follows:
Generally, a method of making a disposable tubular device in accordance
with the present invention comprises extruding a first material through a first die
to form the tube and moving the tube through a second die while extruding a
second material through the second die to form the tube-support structure.
Further, the examiner asserts that the use of a first and second die is critical and that a
person having ordinary skill in the art would have readily understood that such a feature could
not be omitted (answer, pages 5-7). In support of this assertion, the examiner points to the
above-mentioned disclosure in column 2, lines 14-19, as well as a more detailed description in
column 5, lines 6-25, of the appellant's specification, which reads as follows:
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