Appeal No. 2002-1666 Application 09/394,289 Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Black in view of Schowiak, Warren and Breitsprecher. Attention is directed to the appellants’ main and reply briefs (Paper Nos. 19 and 23) and to the examiner’s answer (Paper No. 20) for the respective positions of the appellants and the examiner with regard to the merits of these rejections. DISCUSSION I. The 35 U.S.C. § 112, first paragraph, rejection In explaining this rejection, the examiner submits that “[t]he application as filed does not disclose ‘said fluid tip including a circular shaped member abutting the inner surface of said air cap’ as recited in amended claim 1” (answer, page 3). In other words, the examiner views the appellants’ specification as failing to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. 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 inventors 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. 4Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007