Appeal No. 1999-2665
Application No. 08/826,816
11) for the respective positions of appellants and the
examiner regarding the merits of these rejections.
The 35 U.S.C. § 112, first paragraph, rejection
In the portion of the “Response to Argument” section of
the answer directed to this rejection, the examiner states:
. . . [A]n amendment to the claims or the addition
of a new claim must be supported by the description
of the invention in the application as filed. In re
Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir.
1989). It is noted that claims 48-50 were new
claims added in an amendment. Therefore, while the
examiner admits that the claimed rib orientation is
clearly shown in the drawings, there is no written
description in the specification of the claimed rib
orientation as required by 35 U.S.C. [§] 112, first
paragraph.
[Answer, page 4.]
With respect to the description requirement found in the
first paragraph of 35 U.S.C. § 112, it is well established
that
[t]he 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.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
3
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