Appeal No. 2002-0421
Application No. 09/264,294
194 USPQ 470, 474 (CCPA 1977), cert. denied, 434 U.S. 1064,
197 USPQ 271 (1978). Precisely how close the original
description must come to comply with the description requirement
must be determined on a case-by-case basis. The primary
consideration is factual and depends on the nature of the
invention and the amount of knowledge imparted to those skilled
in the art by the disclosure. See Cas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1561-63, 19 USPQ2d 1111, 1115-17 (Fed. Cir. 1991).
In the answer (pages 3 and 4), the examiner gives reasons to
support the conclusion that the recitation of "one-piece" in
claim 5 is new matter.
From our review of the entirety of appellant's original
disclosure (specification, drawing, and claims), we derive a
clear and fair understanding that the "one-piece" feature now
claimed was descriptively supported in the original disclosure.
The most telling statement in appellant's disclosure to one
skilled in the art as to the "one-piece" characteristic of the
pacifier appears in the summary of the invention section of the
specification (page 1), as follows.
5
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