Appeal No. 2002-0009
Application 09/032,554
See Eiselstein v. Frank, 52 F.3d 1053, 1039, 34 USPQ2d 1467, 1470
(Fed. Cir. 1995)(quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at
1116).
The examiner’s main concern in the present case seems to be
that the claims on appeal, while being readable on the disclosed
embodiments set forth in appellants’ application, may also be
readable on an embodiment not expressly set forth in appellants’
disclosure as originally filed. Thus, the examiner appears to be
concerned that the claims before us on appeal are broader than
the supporting disclosure, and to be of the view that appellants’
description of representative prior art Figures 1A and 1B in the
originally filed application somehow provides a narrow disclosure
which limits permissible claim breadth. We do not agree.
In addition to pointing out that the claims on appeal
actually read on the embodiments expressly disclosed in the
present application, and also that they are not specifically
claiming an embodiment wherein the back pressure chamber is
behind the non-orbiting scroll, appellants have relied heavily on
In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284 (CCPA 1973)
to support their position that it would have immediately and
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