Appeal No. 2006-0911 Παγε 5
Application No. 09/248,595
claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989).
Put another way, "the applicant must . . . convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she was in possession of the invention."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed.
Cir. 1991). Finally, "[p]recisely how close the original description must come to comply
with the description requirement of section 112 must be determined on a case-by-case
basis." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir.
1995) (quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116).
As for the first issue, namely, appellants' failure to describe in the specification
the particular tanning process used to achieve the recited increased water resistance
properties, we first observe that claim 3 is not directed to a process for making a game
ball and does not recite a step of tanning the game ball to achieve the recited
properties. Rather, claim 3 is directed to a game ball having increased moisture
resistance comprising a leather cover having increased water resistance properties
distributed throughout during a tanning process.
Appellants' specification informs us, on page 10, that "[l]eather meeting the
requirements of the present invention may be commercially obtained from a leather
supplier such as Pittard's Inc., Leeds, England or Bali Leathers, Inc., Johnston, New
York" and gives specific examples of leathers (Pittard's WR2000TC and WR100) which
meet the requirements of appellants' invention. Appellants' specification (page 11) goes
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007