Appeal No. 2002-2039 Page 8
Application No. 09/258,712
In the anticipation rejection before us in this appeal, the examiner has set forth a
detailed explanation (answer, pp. 3-4) as to how the subject matter of claims 1, 9 and
21 was readable on Sturman.
The appellants argue with respect to independent claims 1 and 21 (brief, pp. 3-6)
that
Sturman does not show in its Figure 2 a needle valve member having an upper
guide portion at all. There is no dispute that a guide in a fuel injector is
interpreted by those skilled in the art to mean a relatively tight clearance between
two parts that are capable of moving with respect to one another. The clearance
is loose enough that one piece can move with respect to the other but the
clearance is tight enough that it is substantially blocked to fluid flow. In
practicality, the difference between a guide clearance and a non-guide clearance
can be less than the thickness of a line on a typical patent drawing. Applicants
respectfully assert that Sturman shows a loose fitting spacer sitting atop, but not
attached to, a needle valve member. Furthermore, no one skilled in the art would
interpret the spacer of Sturman as providing a guide clearance with the bore in
which it is located. Thus, there is a dispute as to what Sturman shows, and
Sturman includes no text that explicitly or implicitly supports or refutes either the
examiner's or the Applicants' interpretation.
MPEP Section 2125 makes it clear that a drawing alone can support a
§ 102 rejection, but only if the illustration shows "all of the claimed structural
features and how they are put together" (emphasis added) Jockmus vs. Leviton,
28 F.2d 812(2d Cir. 1928). In other words, the cited drawing must provide an
enabling disclosure for what the Applicants have claimed in order to support a
proper § 102(b) rejection. The examiner, however, ignores this applicable case
law and dismisses the argument by stating that all patents are considered valid
and therefore enabling. This statement by the examiner fails to address the issue
at hand since Applicants have made no comment or argument with regard to
whether Sturman provides an enabling disclosure for what Sturman claims.
Applicants argument is that Sturman fails to enable what Applicants have
claimed. There is absolutely no controlling authority to support the examiner's
assertion that because Sturman may be considered a valid US patent, that it
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