Appeal No. 96-4172
Application 08/098,594
references, when considered collectively, do not teach the
coiling means of appellants’ independent claims on appeal. The
examiner and appellants reached this issue when they argued about
whether Widgren hot coils or cold coils the rod stock. Since a
coiling means is not disclosed in Widgren, it is impossible to
state, without making assumptions, whether Widgren uses cold work
or hot coiling to form the springs. Since the combined
references do not teach the claimed coiling means, the examiner
has not established a prima facie case of obviousness with
respect to the subject matter of the claims on appeal. The
obviousness rejection of these claims must be reversed.
Pursuant to our authority under 37 CFR § 1.196(b), this
Board enters the following rejections.
Claims 16, 17, 19 through 22, and 28 through 30 are rejected
under 35 U.S.C. § 112, first paragraph, as based on disclosure
which lacks descriptive support of the claimed invention. If a
person of ordinary skill in the art would have understood the
inventor to have been in the possession of the claimed invention
at the time of filing the description requirement is met. In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1584 (Fed. Cir. 1996).
Precisely how close the original description must come to comply
with the description requirement must be decided on a case-by-
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