Appeal No. 98-0395 Page 3
Application No. 08/333503
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
The Rejection of Claim 6 Under 35 U.S.C. § 112, First Paragraph
In an amendment in response to the second office action, the appellant added
"rigid" to claim 6 to modify the description of the three parts of the mold cavity. The
examiner took issue with this, pointing out that the term was not present in the
specification, and rejecting the claim under the first paragraph of Section 112.
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. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). Our review of the appellant's disclosure confirmed the examiner's
conclusion that the term "rigid" is not used to describe the movable parts that enclose the
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