Appeal No. Application No. 08/898,853
2004-1203
differences in terminology or nomenclature, one of ordinary skill in the art would have readily
appreciated the outer core layer recited in the appealed claims to be encompassed by the
description of the inner cover layer in the appellants’ original disclosure, and in a more general
sense the solid golf ball recited in the appealed claims to be encompassed by the description of
the
solid golf ball in the appellants’ original disclosure.3 Thus, the disclosure of the application as
originally filed would reasonably convey to the artisan that the appellants had possession at that
time of the subject matter now recited in claims 13 through 19.4
Accordingly, we shall not sustain the standing 35 U.S.C. § 112, first paragraph,
rejection of claims 13 through 19.
3 The appellants should note, however, that 37 CFR § 1.75(d)(1) requires that “[t]he
claim or claims must conform to the invention as set forth in the remainder of the specification
and the terms and phrases used in the claims must find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be ascertainable by reference to
the description.”
4 One of the arguments advanced by the examiner involves the citation of Gentry Gallery,
Inc. v. Berkline Corp., 134 F.3d 1473, 45 USPQ2d 1498 (Fed. Cir. 1998) for the proposition that
the doctrine of file wrapper estoppel precludes the appellants’ position in this appeal due to
arguments made earlier in the prosecution of this application. Suffice to say that neither Gentry
nor any other authority of which we are aware supports this argument.
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