Appeal No. 2004-0131
Application No. 08/462,531
1089 (Fed. Cir. 1983), the examiner concluded that the claim as
amended was not disclosed in the specification and that the
claims were therefore drawn to new matter. The Federal Circuit
affirmed, quoting the Board’s statement of the law with approval:
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 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.
Id. at 1375, 217 USPQ at 1096. See also, In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976); In re Ruschig, 379
F.2d 990, 996, 154 USPQ 118, 123 (CCPA 1967).
In the instant case, the examiner objects to the
specification and rejects the claims 2-4, 6-9, 15-22 and 24-32,
stating that “[t]he combination of a shoe sole with side portions
with a greater thickness than the thickness of a middle portion
and a midsole with varying densities has not been disclosed.” 4
Answer, pages 3-4. The examiner states that there is no guidance
in the specification as how two totally different embodiments,
one of a shoe sole and one of a shoe midsole, would be combined.5
We consider here, the issue of whether the disclosure of the
application as originally filed, reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter. Here, the later claimed subject
matter is directed to a shoe having a shoe sole having the
combination of (1) side portions with a greater thickness than
the thickness of the middle portion and (2) a midsole with
varying densities. See claim 2, particularly the text in bold,
in the attached Appendix.
4 This statement goes to the issue regarding the written description
requirement.
5 This statement goes the issue of enablement.
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