Appeal No. 2004-0921
Application No. 09/472,134
which would not have prevented a person of ordinary skill in the
art from making and using, without undue experimentation, the
invention disclosed and claimed by the appellants.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 112, first paragraph, enablement rejection of claims 1 through
49, 55, 57 through 60, 64 through 68, 73, 77 through 88, 90 and
92.
III. The 35 U.S.C. § 112, first paragraph, written description
rejection of claims 60, 73, 85, 88 and 92
The test for determining compliance with the written
description requirement of 35 U.S.C. § 112, first paragraph, 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. 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.
In the examiner’s view (see pages 5, 6 and 14 through 16 in
the answer), the appellants’ original disclosure does not support
the recitation in claims 60, 85, 88 and 92 that the snowmobile
comprises a “tunnel” or the recitation in claim 73 that the
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