Appeal No. 2000-2013
Application No. 08/766,544
upon the examiner to establish that the originally filed disclosure
would not have reasonably conveyed to one of ordinary skill in the
art that appellants had possession of the subject matter now in
question, and not merely establish that there is no literal support
for the now claimed subject matter. See In re Edwards, 568 F.2d
1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978).
We determine that the examiner has not met the initial burden
of establishing a prima facie case of unpatentability. The
examiner states that the original specification and drawings omit
“rod-like supports,” as described by Hamano, but do not reasonably
convey that “all forms of support,” as broadly claimed, can be
excluded from the claimed subject matter (Answer, page 7).3
However, as correctly argued by appellants (Brief, pages 9-10), the
originally filed disclosure, including the specification, the
examples in the specification, and drawings, teaches projections
without any form of support (e.g., see Figures 3A, 3B, and the
specification, page 9, ll. 16-18). Appellants also discuss Hamano
at page 2, ll. 14-23, of the specification, indicating that Hamano
3The examiner also argues that appellants are claiming the
lack of supports “into and through a gap” while Hamano does not
teach any supports for the only embodiment which clearly defines
a gap between surfaces (Answer, page 7). However, we agree with
appellants (Reply Brief, page 4) that this argument does not
appear to be relevant to the issue under 35 U.S.C. § 112.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007