Appeal 2006-2721
Application 09/579,938
claims 21 and 28 under 35 U.S.C. § 103(a) as being unpatentable over Reed
in view of Briggs (id. 13).
Appellant argues the claims in each ground of rejection as a group, and
with respect to the grounds of rejection based on prior art, further argues the
independent claims separately with the respective dependent claims standing
or falling therewith. Thus, we decide this appeal based on the individual
claims to the extent argued by Appellant and the circumstances of the grounds
of rejection admit. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
With respect to the ground of rejection under § 112, first paragraph,
written description requirement, the Examiner contends the claims contain
the limitation “the dispensing mechanism has a size sufficient for paint to
flow through,” raising “the issue of the size of the dispensing mechanism
[that] is simply not discussed in the originally filed specification at all”
(Answer 3-4). The Examiner contends that the relationship between the size
of a dispensing mechanism and its capability to dispense paint, including “an
intrinsic threshold size below which a dispensing mechanism could not
dispense paint,” is not described (id. 13-14). Appellant contends the claim
limitation requires a mechanism of a size sufficient for paint to flow there
through and such size need not be stated in the Specification (Br. 6; see also
Reply Br. 4).
With respect to the grounds of rejection under § 102(b) over each of
DeVito and Briggs, the Examiner contends an apparatus disclosed by each
reference meets the structural limitations of claim 1 including “means . . . for
dispensing removably coupled to the base of the compartments . . . [and]
capable of dispensing without lifting the compartments” (Answer 4 and 5).
The Examiner contends the apparatus of each reference describes a spigot
4
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