Appeal 2006-1543
Application 10/239,769
March 28, 2001. Appellants further argue that Figure 2 merely illustrates
the embodiment of the present invention that is described in the text to
which the Examiner objected to as “new matter.” (Br. 4).
As a first matter, we note that the language that is the subject of the
objection and rejection did not appear until the Amendment first presented
on May 17, 2004 (entered July 23, 2004) and the drawing was not filed, by
Appellants own admission, until February 4, 2004 (Br. 4). The relevant
question is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of this newly added subject matter. In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983). The written description inquiry is a
factual one and must be assessed on a case-by-case basis. See Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1116 (Fed. Cir.
1991) and cases quoted therein. What is required to meet the written
description requirement “depends on the nature of the invention and the
amount of knowledge imparted to those skilled in the art by the disclosure.”
In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). The
Examiner has provided a factual basis supporting the finding that the
original Specification would not reasonably convey to the artisan that the
Appellants had possession of the concept of applying the treatment agent to
the dryer belt for transfer to the web as now illustrated in Figure 2, as now
described in the Specification, and as now claimed (Answer 3-6).
Appellants point to original dependent claims 7 and 8 for support of
the newly added matter (Br. 4-6). However, Appellants’ interpretation of
the original claims is problematic for the reasons pointed out by the
Examiner in the Answer (Answer 7-9). According to Appellants’
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