Appeal No. 1998-2521
Application No. 08/184,212
structure would not meet the terms of claims 10-18. Claims 25-33, by virtue of their
dependency, are also limited to the c-shaped pocket.
Under the provisions of 37 CFR § 1.196(b), the following new grounds of
rejection are entered against claims 37 through 48:
1. Claims 37 through 48 are rejected under the first paragraph of 35 U.S.C. § 112
as being based on a specification which, as filed, does not satisfy the description
requirement in that paragraph.
2. Claims 41 through 44 are rejected under the second paragraph of 35 U.S.C.
§ 112 as being indefinite for failing to particularly point out and distinctly claim the
subject matter which appellant regards as his invention.
With regard to the § 112, first paragraph, rejection, the test for determining
compliance with the written description requirement in the first paragraph of § 112 is
whether the disclosure in appellant’s application as originally filed reasonably conveys to
the artisan that appellant 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, there is no descriptive support in the original specification,
including the original claims, for the recitation in independent claim 37 that the strip,
exclusive of the interlocking extremities and the attaching means, is less than 1
centimeter thick. In fact, we find no description in the specification as filed that any part
of the strip is less than 1 centimeter thick. The statement on page 7 of the specification
that the “medical tube holder apparatus is of relatively small size and low profile” does
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