Appeal No. 96-3181
Application 08/251,963
ipsis verbis is insufficient.” Wertheim, 541 F.2d at 265, 191 USPQ at 98. Thus, the examiner’s finding
that the term “pulsation” is not per se found in the original disclosure is insufficient to support the
rejection.
Accordingly, the only substantive reason advanced by the examiner which bears on whether the
appealed claims satisfy § 112, first paragraph, written description, is that “a slight increase in the space
98 is not [the] same as ‘pulsation.’” We have carefully considered the record before us with respect to
whether one skilled in this art would have recognized in the patent specification a description of the
claimed methods which employ “pressure pulsations” as encompassed by appealed claims 16 and 18
through 20. Based on our consideration, we find ourselves in agreement with appellants for the reasons
advanced in their reply brief (pages 1-2), that one skilled in the art would have recognized in the original
patent specification a disclosure of the so claimed invention. We add the following only for emphasis.
The pertinent part of the original patent specification3 reads as follows:
If the wiper 92 is produced from somewhat flexible material, the wall between filtrate
compartments 20 causes, when passing the tip of the wiper [sic - “,”] a slight pressure
increase in the space 98, which again causes the bending of the wiper 92 outwards from
the wire surface [22], whereby, for example, an accumulation of fibers generated between the
tip of the wiper 92 and the wire surface 22 is allowed to loosen and fall into the suspension.
[Col. 8, lines 35-43; emphasis ours.]
The numerals in this passage are found in original “FIG. 6” (see col. 7, line 63, to col. 8, line 33). We
refer to “FIG. 1” (see col. 3, line 57, to col. 4, line 35) and to “FIG. 4B” (see col. 6, lines 32-53) for a
more complete understanding of the apparatus employed in the methods claimed in appealed claims 16
and 18 though 20. With respect to the filtrate compartments 20 (see “FIG. 1”), the patent specification
states that “[a] great number of filtrate compartments 20, approximately 30-40, has been arranged
about the [inner] rim of the [drum] cylinder” (col. 4, lines 6-8). We observe that this arrangement is
depicted in amended “FIG. 6” from which it is apparent that the filtrate compartments 20 are separated
3 Appellants amended their patent specification by parenthetically inserting the term “pulsation” after the
word “increase” in the quoted passage in order to “provide proper antecedent basis for terminology in
the claims” (principal brief, Paper No. 12; page 5). See In re Wright, 343 F.2d 761, 767, 145 USPQ
182, 188 (CCPA 1965), cited by appellants (reply brief, Paper No. 19; page 2).
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