Appeal No. 2006-0520 Παγε 3
Application No. 10/303,385
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner's rejection of claims 1 to 13 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement. In
connection with this rejection, the examiner states:
The claim(s) contains 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 inventor(s),
at the time the application was filed, had possession of the
claimed invention. In particular in claim 1 there is no support
in the specification for a cushioning component disposed
between the endplate components without being attached
thereto (emphasis in the original) [answer at page 4].
We initially note that the test for determining compliance with the written
description requirement of the first paragraph, is whether the disclosure of the
application as originally filed reasonably conveys to the artisan that the inventors had
possession at the time of the later claimed subject matter, rather than the presences 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). The content of the drawings
may also be considered in determining compliance with the written description
requirement. Id.
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