Appeal No. 2001-2656 Page 4
Application No. 09/208,514
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 19) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 18) and Reply Brief (Paper No. 20) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The First Rejection Under The First Paragraph of Section 112
The first of the two rejections of claims 1-10 and 20 under the first paragraph of
Section 112 is that the “recess defined in a first surface” of the carrying bag was not
described in the specification in such a way as to reasonably convey that the inventor
had possession of the claimed invention at the time the application was filed. We do
not agree.
It is true that the phrase “recess defined in the first surface” is not present in the
specification as filed. However, as was pointed out by the appellant on page 8 of the
Brief, the test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
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