Appeal 2006-2998
Application 09/956,524
application disclosing a ball valve, and particularly the drawings thereof,
supported a claim limitation that read: "having, in untensioned condition, a
mean diameter corresponding approximately to the mean diameter of said
chamber and a radial width smaller than the radial width of said chamber
. . . . " Id. at 952, 133 USPQ at 538. The court did not agree with the
Board's conclusion that the "radial width" relationship was not supported by
applicant's figure 5: The board's statement that "drawings alone cannot form
the basis of a valid claim" is too broad a generalization to be valid and is,
furthermore, contrary to well settled and long-established Patent Office
practice . . . . Consider, for one thing, that the sole disclosure in a design
patent application is by means of a drawing . . . . For another thing,
consider that the only informative and significant disclosure in many
electrical and chemical patents is by means of circuit diagrams or graphic
formulae, constituting "drawings" in the case . . . . The practical, legitimate
enquiry in each case of this kind is what the drawing in fact discloses to one
skilled in the art. . . . The issue here is whether there is supporting
"disclosure" and it does not seem, under established procedure of long
standing, approved by this court, to be of any legal significance whether the
disclosure is found in the specification or in the drawings so long as it is
there. Id. at 955-56, 133 USPQ at 541-42.
Employing a "new matter" analysis, the court in In re Heinle, 342
F.2d 1001, 145 USPQ 131 (CCPA 1965) reversed a PTO rejection of the
applicant's claims to a "toilet paper core" as "including subject matter having
no clear basis in the application as filed." Id. at 1003, 145 USPQ at 133. The
claim limitation said to be without support required that the width of the
apertures in the core be "approximately one-fourth of the circumference of
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