position was obvious because the overall operation of the device would not be affected by
such change).
Further, there is at least a suggestion in Jones that the disposal containers (20)
could be disposed in the main container (12) in either a vertical or horizontal
arrangement, as shown in the two different embodiments of the disposal containers (20).
In particular, Figure 2 shows a first embodiment of a disposal container (20) in which the
pad, when inserted, would align from top-to-bottom, and Figure 3 shows a second
embodiment of a disposal container (20) in which the pad, when inserted, would align
from side-to-side. (See May, col. 3, lines 28-31). As such, we hold that alignment of the
pads side-to-side within the receptacle would have been matter of design choice and
obvious to one of ordinary skill in the art at the time of the invention. Accordingly, we
sustain the rejection of claim 8 as unpatentable over cited art.
Rejection of Claim 8 under 35 U.S.C. § 112, first paragraph
The examiner has determined that claim 8 contains subject matter –pads being
horizontally aligned from side to side in the receptacle – that was not described in the
specification in such a way as to reasonably convey to one skilled in the relevant art that
the inventors had possession of the claimed invention at the time the application was
filed.
The appellants direct our attention to page 7, paragraph [0033] of the specification
and Figures 13 and 14 for written description support for claim 8.
We agree with the appellants’ position.
The factual inquiry for determining whether a specification provides sufficient
written description for the claimed invention is whether the specification conveys with
reasonable clarity to 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
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