Appeal No. 2002-0009
Application 09/032,554
naturally occurred to one of ordinary skill in the art upon
reading their originally filed specification that the present
invention is not limited to the form of prior art scroll
compressor seen in Figures 1A and 1B of the present application,
but is also applicable to other well known scroll compressors
with back pressure chambers, i.e., those conceded by the examiner
to be well known in the scroll compressor art wherein the back
pressure chamber is behind the non-orbiting scroll, instead of
behind the orbiting scroll as seen in Figures 1A and 1B.
Since we are in full agreement with appellants’ arguments
set forth in their brief and reply brief, we incorporate those
positions as our own. As the Court noted in Smythe, 480 F.2d at
1382, 178 USPQ at 284, there is no per se rule that in every case
where the description of the invention in the specification is
narrower than that in the claims there has been a failure to
fulfill the description requirement of 35 U.S.C. § 112, first
paragraph. Rather, each case must be decided on its own facts to
determine whether the application as originally filed clearly
conveyed in any way to those skilled in the art, to whom it is
addressed, the information that appellants invented the subject
matter claimed. Since we believe that in this case appellants
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