Appeal No. Application No. 08/898,853
2004-1203
formed outside said intermediate layer, and a cover for coating said solid core, wherein:
said inner layer is designed to have a Shore D hardness which is lower than that of said
intermediate layer;
said intermediate layer is designed to have a Shore D hardness of 45 to 65; and
said outer layer is designed to have a Shore D hardness which is lower than that of said
intermediate layer.
THE REJECTION
Claims 13 through 19 stand rejected under 35 U.S.C. § 112, first paragraph, as containing
subject matter which was not described in the specification in such a way as to reasonably
convey
to one skilled in the relevant art that the inventors, at the time the application was filed, had
possession of the claimed invention.
Attention is directed to the main and reply briefs (Paper Nos. 48 and 50) and the final
rejection and answer (Paper Nos. 39 and 49) for the respective positions of the appellants and the
examiner regarding the merits of this rejection.
DISCUSSION
The examiner’s explanation of the rejection indicates that it is predicated on an alleged
failure of the specification 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. In re
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