Appeal No. 2006-1670 Page 3
Application No. 10/336,729
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding this appeal, we make reference to the examiner's answer for the examiner's
complete reasoning in support of the rejections and to the appellants’ brief and reply brief (filed
November 2, 2005) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art, and to the respective positions
articulated by the appellants and the examiner. As a consequence of our review, we make the
following determinations.
We turn first to the rejection of claims 27-52 under the first paragraph of 35 U.S.C. §
112. 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. See Vas Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
The basis of the examiner’s written description rejection is that the appellants’
specification, as originally filed, does not provide written description support for the “padded”
panel or underpanel recited in claims 27-52. The examiner’s position is certainly
understandable, inasmuch as the appellants’ original specification does not contain the term
“padded” or any recognized synonym of the term “padded.”
The appellants argue that the “padded” characteristic of the upper panel is supported in
their original disclosure by (1) the description of the upper panel as “absorbent,” (2) the
illustration in “Figure 1” [sic: Figure 2] of cross lines, allegedly invoking the illusion of quilting,
(3) the description of the absorbent panel as being “embossed” and (4) the allusion to “an
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