Appeal No. 2006-1281 Page 4
Application No. 09/926,029
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the following determinations.
We turn first to the rejection of claims 8 and 9 under the first paragraph of 35
U.S.C. § 112 as lacking written description support. In making this rejection, the
examiner contends that the recitation “each said recess forming a thinner, more flexible
portion of the wall than portions of the wall between at least two of said recesses” in
claim 8 lacks written description support in the application as originally filed. The
examiner’s findings that appellant’s specification “is silent regarding the flexibility of the
wall portions located immediately radially outwardly of the recesses” (answer, page 4)
and that “[t]here is no disclosure [in appellant’s specification] that [the wall of the tubular
shaft member 21] is made of a single homogeneous material” (answer, page 6) are
correct.
The test for determining compliance with the written description requirement,
however, 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. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
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