Appeal No. 2002-0363
Application No. 08/162,373
the English Language (Gramercy Books 1996), submits that “the skilled person is
aware that midsole and outersole are two separate elements of a shoe sole and that
outersole forms an outer part of the shoe sole” (main brief, page 12). The appellant
also refers to highlighted copies of figures 7A-7C in the main brief (see pages 6-8 and
13) as support for the midsole limitations at issue, and additionally notes (see pages 4-
5 in the reply brief) that the instant specification incorporates by reference the
disclosure of related Application No. 07/239,667, filed September 2, 1988, which
describes element 39 as a combined midsole and outersole.
The issue here is whether the appellant’s specification complies with the written
description requirement of 35 U.S.C. § 112, first paragraph. The test for compliance
with this 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
latter claimed subject matter, rather than the presence or absence of the literal support
in the specification for the claim language. In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983). The content of the drawings may also be
considered in determining compliance with the written description requirement. Id.
Upon careful review of the disclosure in the instant application as originally filed,
including the incorporation by reference to prior Application No. 07/239,667, we are
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