Appeal No. 1996-2163
Application 08/106,541
invention herein implicitly refers to the written description portion of this statutory provision.
In re Higbee, 527 F.2d 1405, 1406, 188 USPQ 488, 489 (CCPA 1976).
The test to be applied under the written description portion of 35 USC § 112, first
paragraph, is whether the disclosure of the application as originally filed reasonably
conveys to the artisan that the inventors had possession at that time of later claimed
subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117, reh’g denied (Fed. Cir. July 8, 1991) and reh’g en banc denied (Fed. Cir. July 29,
1991).
Given the present filing date of August 16, 1993 of this continuation-in-part
application, we must reverse this rejection. Original claims 8 and 15 in this application,
figures 5 and 6 and their corresponding discussion at pages 7 and 8 of this application as
filed provide support for the “solid material” limitation of these claims on appeal.
NEW REJECTION UNDER 35 USC § 112, FIRST PARAGRAPH
Claim 18 is rejected under the written description portion of the first paragraph of
35 USC § 112. There is no evidence to us in the originally filed claims, the drawings and
written description of this CIP application that appellant possessed the subject matter of
dependent claim 18 on appeal because none of these indicate to us that appellant had
possessed and otherwise determined any minimum radius of curvature and any upper end
7
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