Appeal No. 2005-2656
Application No. 09/805,586
DISCUSSION
I. The 35 U.S.C. § 112, first paragraph, rejection of claims 1-20
As indicated above, this rejection rests on an alleged failure of the appellant’s
specification to comply with the written description requirement of § 112, ¶ 1. The test
for determining compliance with this 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. In re Kaslow, 707
F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
According to the examiner, the original disclosure in the instant application would
not reasonably convey to the artisan that the appellant had possession at that time of
the subject matter now claimed because “[c]laims 1, 11, and 12 define [that] the
expansion restraining elements remain operative without failing, however the
specification does not convey to one skilled in the art what parameters determine a
successful and/or failing expansion restraining element” (final rejection, page 2).
Although the specification does not describe such parameters, the failure to do
so, in and of itself, does not justify the examiner’s rejection. The stated criticism of the
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