Appeal 2006-0899
Application 09/912,290
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 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…. The content
of the drawings may also be considered in
determining compliance with the written description
requirement (citation omitted.
Applying Kaslow to the present situation, we determine that the
specification as originally filed describes the negative limitation “a single
blanket of resilient fibrous insulation having no folds” recited in claims 1
through 9 within the meaning of 35 U.S.C. § 112, first paragraph.
Specifically, we find that the specification as originally filed describes a
resilient fibrous insulation batt made from a single resilient fibrous
insulation blanket in reference to Figures 5 and 6 of the application. See
specification at 5-6. While Figure 5 depicts a single resilient fibrous
insulation blanket, Figure 6 illustrates a resilient fibrous insulation batt
having no folds. We find that these disclosures as a whole would have
reasonably conveyed to one of ordinary skill in the art that the Appellants
had possession of a resilient fibrous insulation batt having no folds. In re
Anderson, 471 F.2d 1237, 1244, 176 U.S.P.Q. 331, 336 (C.C.P.A. 1973); Ex
parte Parks, 30 U.S.P.Q.2d 1234, 1236-37 (Bd. Pat. App. & Int. 1993).
The Examiner relies on Ex parte Grasselli, 231 U.S.P.Q. 393, 394
(Bd. Pat. App. & Int. 1983) to support his position that “[n]egative
limitations are not allowed unless expressly set forth in the specification.”
See Answer at 3. However, the Examiner’s interpretation of Grasselli is
misplaced. In the first place, such interpretation is inconsistent with current
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