Appeal No. 1998-0484 Page 3
Application No. 08/675465
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 Under 35 U.S.C. § 112, First Paragraph
The examiner has taken the position that the language of claim 1 which recites that
the oblong lower outlet opening is located completely “within” the circular upper inlet
opening is not supported by the disclosure, considering that the two openings are remote
from each other.
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). It would appear that the examiner believes the definition of “within”
should be so limited as to require that the two openings be in the same plane which, of
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