Ex Parte SCARPA et al - Page 4



          Appeal No. 2002-1666                                                        
          Application 09/394,289                                                      

               Claim 7 stands rejected under 35 U.S.C. § 103(a) as being              
          unpatentable over Black in view of Schowiak, Warren and                     
          Breitsprecher.                                                              
               Attention is directed to the appellants’ main and reply                
          briefs (Paper Nos. 19 and 23) and to the examiner’s answer (Paper           
          No. 20) for the respective positions of the appellants and the              
          examiner with regard to the merits of these rejections.                     
                                     DISCUSSION                                       
          I. The 35 U.S.C. § 112, first paragraph, rejection                          
               In explaining this rejection, the examiner submits that                
          “[t]he application as filed does not disclose ‘said fluid tip               
          including a circular shaped member abutting the inner surface of            
          said air cap’ as recited in amended claim 1” (answer, page 3).              
          In other words, the examiner views the appellants’ specification            
          as failing to comply with the written description requirement of            
          35 U.S.C. § 112, first paragraph.                                           
               The test for determining compliance with the written                   
          description requirement is whether the disclosure of the                    
          application as originally filed reasonably conveys to the artisan           
          that the inventors had possession at that time of the later                 
          claimed subject matter, rather than the presence or absence of              
          literal support in the specification for the claim language.                

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