Appeal No. 2001-0205 Page 8
Application No. 08/692,016
Pursuant to our authority under 37 CFR § 1.196(b), we enter the following new
rejections:
(1)
Claims 1, 2, 4-10 and 16 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to describe the invention in such full, clear, concise, and exact terms as to enable
any person skilled in the art to which it pertains, or with which it is most nearly connected,
to make and use the same.
The trash bag recited in independent claims 1 and 16 comprises at least two knots,
with each of said knots “having a diameter so as to substantially support the weight of said
debris when said trash bag is full.” This relationship between the diameter of the knot and
the weight of the debris in the bag is not explicitly described in the specification and, in our
view, is not apparent from the original disclosure. In addition, from our perspective, how to
achieve this claimed relationship without undue experimentation would not have been
apparent to one of ordinary skill in the art from the information provided in the original
4
disclosure. This being the case, the above-quoted limitation is neither described nor
4The 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).
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