Appeal No. 1998-0210
Application No. 08/149,193
specification. See Reiffin v. Microsoft Corp., 214 F.3d 1342,
1345, 54 USPQ2d 1915, 1917 (Fed. Cir. 2000). 9
As explained earlier in this opinion, we have determined
that one skilled in the art would technically recognize that
the disclosed ribs (traction means) would not only provide for
traction but would be reasonably expected to bear some weight
of the golfer, depending upon the nature of the golf turf or
surface that a golfer is standing on. Having said this,
however, on the particular facts of this case, it is also
quite apparent to us that the underlying disclosure would not
have expressly or inferentially instructed a person skilled in
this art that the ribs or traction means are provided
specifically to distribute weight in a plurality of different
directions, as now claimed. In other words, one skilled in
the art would not have immediately discerned the limitation at
issue in claims 119 and 132 from a reading of the original
disclosure, i.e., there would not be a recognition that the
limitation was encompassed within the original invention. See
9Of interest, are the Guidelines for Examination of
Patent Applications Under the 35 U.S.C. § 112, first
paragraph, “Written Description” Requirement found at 1242 OG
168 (January 30, 2001).
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