Appeal No. 2005-0489 Page 8
Application No. 10/144,987
480 F.2d 1376, 1383, 178 USPQ 279, 284 (CCPA 1973)). The fact that one skilled in
the art might realize from reading a disclosure that something is possible is not a
sufficient indication to that person that the something is a part of an appellant's
disclosure. See Barker, 559 F.2d at 593, 194 USPQ at 474. Precisely how close the
original description must come to comply with the description requirement must be
deter-mined on a case-by-case basis. The primary consideration is factual and
depends on the nature of the invention and the amount of knowledge imparted to those
skilled in the art by the disclosure. See Vas-Cath Inc. v. Mahurkar, 935 F.2d at
1561-63, 19 USPQ2d at 1115-17.
We note, at the outset, that claims 28-32 are not original claims. Each of these
claims recites “said lower mounting substantially precluding said lower fitting from lateral
movement with respect to said axis of elongation, such lateral movement being limited
by slight spacing between said lower mounting and said body, said slight spacing
provided solely to facilitate said free movement.” The appellant’s specification discloses
that “[t]he lower fitting may freely reciprocate with respect to the flagpole and, if desired,
may rotate with respect thereto” (page 4). The specification also states, on page 6, that
[i]n one embodiment of the present invention, the lower
fitting has a fixed diameter opening therethrough sized to
allow easy sliding along the flagpole. In another
embodiment, the lower fitting consists of a known clamping
mechanism which is placed about the flagpole in a manner
not contemplated by that mechanism, to wit, so that the
lower fitting loosely fits about the flagpole without clamping it
to allow easy sliding.
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