Appeal Number: 2006-1645
Application Number: 10/067,141
extending from the spacer in the way that Birli1 shows the microphone extending from
the spacer.
Appellants argue (Brief, page 4) that microphone 74 is shown in Figures 5 and 6
as extending from the housing 70 of spacer 50, and, therefore, satisfies the claim
language. Further, appellants contend that the examiner has read into the claim that the
microphone must extend outside the boundaries of the spacer, whereas such a limitation
does not appear in the claims.
We agree with appellants. The question of adequate written description under 35
U.S.C. § 112, first paragraph, is whether the language of the claims is supported by the
original specification. Claims 1, 10, 19, and 20 recite a spacer having “a microphone
extending therefrom.” Claims 19 and 20 further recite that the microphone “extend[s]
into a clean air envelope of said face mask.” Page 4 of the specification at lines 28-30
and page 9 at lines 5-7 explain that the air envelope includes the area defined by the
peripheral housing or spacer. Page 9, lines 26-28, reads that the microphone is within the
clean air envelope. Lastly, page 11, line 8, states that the microphone “extends from the
peripheral housing 70 of the spacer.” Thus, the specification clearly discloses the spacer
extending from the spacer into the clean air envelope of the face mask, as recited in the
claims. The claims do not require that the microphone extend beyond the spacer, and we
will not read any such limitation into the claims. Accordingly, we will reverse the
written description rejection of the claims.
Appellants (Brief, pages 3 and 6-8) present as an additional issue whether a
declaration of interference between the present application and U.S. Patent No. 5,463,693
to Birli is proper. However, the Board does not have jurisdiction over this issue. An
examiner’s refusal to initiate an interference is petitionable to the Director of the USPTO,
not appealable. See MPEP § 1002.02(c)(3)(e). Therefore, at the conclusion of this
appeal, jurisdiction of this application will return to the examiner for a determination of
whether to initiate an interference. We direct the examiner’s and appellants’ attention to
37 C.F.R. § 41.202(a) for the requirements for suggesting an interference.
1 According to the examiner (Answer, page 4), claims 1 through 20 of the instant
application have been copied from U.S. Patent No. 5,463,693 to Birli.
3
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007