Appeal No. 2001-0515
Application 08/926,358
lateral plane that is parallel to and anteriorly offset from a medial lateral plane containing the
major axis of Kinnett’s oval body 24.
In the final analysis, we can conceive of no understandable interpretation of the
recitation that the keel lies in a medial-lateral plane to establish the metes and bounds of the
claimed subject matter. At best, this limitation is inaccurate. Claim 1 and, hence, dependent
claims 3-8 therefore fail to satisfy the requirements of § 112, second paragraph, because it
cannot be said that an inaccurate claim particularly points out and distinctly claims the subject
matter which appellants regard as their invention. Compare In re Knowlton, 481 F.2d 1357,
1366, 178 USPQ 486, 492 (CCPA 1973) (claims in an application must accurately define the
invention).
With regard to our new ground of rejection under the first paragraph of § 112, the
test for determining compliance with the written description requirement in that paragraph is
whether the disclosure in appellants’ application as originally filed reasonably conveys to the
artisan that appellants had possession at that time of the subject matter now claimed. In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The content of the
original specification, including the original claims, and the original drawings may be considered
in determining compliance with the descriptive requirement. Id.
In the present case, neither the original specification nor the original drawings
provide the requisite descriptive support for the recitation in claim 1 that the keel lies in a
medial-lateral plane, particularly a medial-lateral plane that is parallel to and anteriorly offset
from a medial-lateral plane containing the major axis of the oval body. There also is no
descriptive support in the original specification for the recitation that the major axis (which is
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