Appeal No. 2002-0033 Page 7
Application No. 09/372,020
The original specification provided the following:
(1) the dome of a tubular skylight includes an exterior surface having a prismatic portion
to reflect light downwardly into the tube (specification, p. 2);
(2) the generally hemispherical dome portion 60 includes an interior surface 70 and an
exterior surface 72 wherein the exterior surface includes a prismatic surface or portion
68 and a nonprismatic surface or portion 69 (specification, p. 5);
(3) the prismatic portion 68 includes a plurality of grooves 71 that are molded, cut, or
otherwise formed in the exterior surface 74 (specification, p. 5); and
(4) the above description is that of a preferred embodiment of the invention
(specification, p. 9).
In our view, the above-noted portions of the original specification provide
sufficient written description support for claims 18 to 34 which omit the limitation that
the prismatic portion is provided on the exterior surface. In that regard, the original
disclosure does not establish the prismatic portion being provided on the exterior
surface as an "essential element" of the invention that must be included in the claims.
The examiner's apparent position that a disclosure of only one embodiment of the
invention makes that embodiment critical or essential is without merit. That position
would appear to prohibit all claims in all applications that are broader than the original
claims.
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