Appeal No. 2003-1272 Page 12
Application No. 10/039,338
In our view, claims 18 to 25 which include the phrase "traction means" do not
violate the written description requirement set forth in the first paragraph of 35 U.S.C.
§ 112. 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. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). In this case, it is clear that the appellants had possession of the
claimed "traction means" in the form of the corresponding structure described in the
specification (i.e., the traction ribs). As to the equivalents that are by statute
encompassed by the claimed "traction means," we agree with the appellants that such
equivalents are, by definition, never disclosed in the application. As such, it is our
determination that the written description requirement is not violated by claims 18 to 25.8
8We note that the examiner did not reject claims 26 to 34 under this basis even
though these claims broaden the disclosed traction ribs to protrusions, traction
members, or traction elements. However, we have entered a new ground of rejection
pursuant to 37 CFR § 41.50(b) in this decision.
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