Appeal No. 2003-1757
Application 10/003,202
Considering first the ground of rejection under § 112, second paragraph, the initial burden
of establishing a prima facie case on any ground under the second paragraph of § 112 rests with
the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992),
citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (“As discussed
in In re Piasecki, the examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.”). In making out a prima facie case
of non-compliance with this statutory provision on the basis that a claim is indefinite for failing
to particularly point out and distinctly claim the subject matter which appellant regards as the
invention, the examiner must establish that when the language of the claim is considered as a
whole as well as in view of the written description in the specification as it would be interpreted
by one of ordinary skill in the art, the claim in fact fails to set out and circumscribe a particular
area with a reasonable degree of precision and particularity. In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971).
Both appealed claims 8 and 9 contain the same language: “said cap outer edge is defined
by a wall, and said edge of said open edge portion of said fillet area is defined by a wall that is
substantially parallel to said wall of said cap outer edge.” These claims directly and ultimately
depend on appealed claim 1, respectively, which states the claimed “hollow poppet valve” has a
“fillet area having a fire contacting face and an open edge portion terminating in an edge that
opposes said fire contacting face; a cap forming an opposing face to said fire contacting face; a
weld joint integrating an outer edge of said cap around the edge of the open edge portion of said
fillet area . . . .” The examiner acknowledges that said “walls define the weld joint of the fillet
area” but takes issue with the term “fillet area” (answer, page 4). Appellant submits that the
“fillet area” is defined in the written description in the specification, which includes the
drawings, as “fillet area 14” (reply brief, page 2; understrike emphasis in original).
We agree with appellant that it is clear from the disclosure with respect to the
specification drawings in the written description in the specification as it would be interpreted by
one of ordinary skill in the art, makes clear the definition of the term “fillet area.” Thus, because
the examiner has not established a prima facie case based on the written description provided in
appellant’s specification, we reverse this ground of rejection.
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Last modified: November 3, 2007