Appeal No. 2004-0893
Application No. 09/124,310 Page 7
“[T]he PTO has the initial burden of presenting evidence or
reasons why persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the claims.”
In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976).
"Precisely how close the original description must come to comply
with the description requirement of § 112 must be determined on a
case-by-case basis." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1562, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
Here, the examiner (answer, page 3) urges that:
Specifically, the specification does not clearly
establish what is meant by the recitations of a “towbar
head” and a “towbar-guided industrial truck.” In the
English language, a towbar head is generally considered
to comprise the elements used to connect a towed
trailer to a towing vehicle. The recitation of a
“towbar head” in the instant application is
inconsistent with the accepted meaning of this
terminology. Furthermore, it cannot be determined what
structure comprises a “towbar-guided industrial truck.”
At page 8 of the answer, the examiner concludes that
“[b]ased on the claim recitations of a ‘towbar head’ and a
‘towbar-guided industrial truck’ the examiner considers that the
specification does not clearly convey the information that
appellant has invented.”
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