Appeal No. 2006-1612 Page 5
Application No. 10/153,376
those skilled in the art that, as of the filing date sought, applicant was in possession
of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An applicant shows possession
of the claimed invention by describing the claimed invention with all of its
limitations using such descriptive means as words, structures, figures, diagrams,
and formulas that fully set forth the claimed invention. Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
We agree with the appellant that even if the specification does not specify
that the figures are drawn to scale, the figures can still be relied upon as support for
the claimed description of the shape of the female profile. Specifically, the figures
convey with reasonable clarity to those skilled in the art that, as of the filing date
sought, the applicant was in possession of the invention having a female profile
that is partially cylindrical through greater than 180 degrees. This angle is clearly
depicted, for example, in Figures 3 and 4 regardless of the scale of the drawings.
Accordingly, we do not sustain the examiner’s rejection of claims 1-8 for lack of
written description.
Rejection under 35 U.S.C. § 112, second paragraph
The examiner has determined that claims 4 and 8 contradict the structure for
the female profile set forth in the claims from which they depend. Specifically, the
examiner states, “[c]laims 4 and 8 recite the female profile having a ‘second at
least partially cylindrical projecting element’ which would interrupt the ‘partially
cylindrical through greater than 180 degrees’ internal surface of the female profile
in claims 1 and 5.” (Examiner’s Answer, p. 4). The appellant contends that the
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