Appeal No. 2001-2656 Page 5
Application No. 09/208,514
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.2
Independent claims 1 and 20 are directed to a carrying bag including “at least
one storage compartment,” which is disclosed on page 7 of the specification as
“storage compartment 4.” The claims continue by stating that the storage compartment
is “formed from a recess defined in a first surface of said carrying bag.” In this regard,
page 7 of the specification informs one of ordinary skill in the art that a “storage
compartment 4 is defined on a portion of a rear surface 8 of the backpack.” The
common applicable definitions of “recess” being an indentation or an alcove,3 it is our
view that one of ordinary skill in the art would have appreciated that the “recess” as set
forth in claims 1 and 20 corresponds to the “storage compartment 4" described in the
specification. This interpretation is confirmed by the statement in the claim that the
recess is covered by the expandable material, which corresponds to the explanation on
page 8 of the specification that compartment 4 has a surface 6 of expandable material.
This rejection is not sustained.
The Second Rejection Under The First Paragraph of Section 112
2See 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)
3See, for example, Webster’s New Collegiate Dictionary, 1973, page 964.
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