Appeal No. 2001-0840
Application No. 08/896,882
not described in ipsis verbis in the application disclosure as originally filed, such is not required by
Section 112, first paragarph. As the court stated in In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ
1089, 1096 (Fed. Cir. 1983):
The 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 claimed language. (citations omitted)
To make this determination, it is important to evaluate whether a new concept is introduced by the
claim language in question in violation of Section 112, first paragraph. In re Anderson, 471 F.2d
1237, 1244, 176 USPQ 331, 336 (CCPA 1973). “[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Based on the facts of the present case, we concur with the appellant that the application
disclosure as originally filed, when considered in its entirety, reasonably conveys to one of ordinary
skill in the art the concept of forming and using a non-thermoplastic vulcanized rubber composition.
As stated by the appellant (Brief, page 6), the specification sets forth a rubber composition which
has been “vulcanized” to “transform a week thermoplastic mass...into a strong, elastic, tough
rubber.” This description is consistent with the definition for “vulcanization” as set fort at page 625
of Grant & Hackh’s Chemical Dictionary, fifth edition and at page 12 of Polymer Chemistry: An
Introduction by Seymour et al., Marcel Dekker, Inc., 1981 (attached herewith). Vulcanization
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