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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