Appeal No. 2003-0540 Page 12
Application No. 09/737,001
claimed Shore D hardness limitations as set forth in independent claims 9 and 10. In
that regard, we note that a disclosure that merely renders the later-claimed invention
obvious is not sufficient to meet the written description requirement; the disclosure must
describe the claimed invention with all its limitations. See Tronzo v. Biomet Inc., 156
F.3d 1154, 1158-60, 47 USPQ2d 1829, 1832-34 (Fed. Cir. 1998); Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966 (Fed. Cir.
1997); Vas-Cath Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117; In re Winkhaus, 527
F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975); In re DiLeone, 436 F.2d 1404, 1405,
168 USPQ 592, 593 (CCPA 1971); In re Wohnsiedler, 315 F.2d 934, 937, 137 USPQ
336, 339 (CCPA 1963).
For the reasons set forth above, the decision of the examiner to reject claims 9
and 10, and claims 11 to 13 dependent thereon, under 35 U.S.C. § 112, first paragraph,
is affirmed.
ADDITIONAL CONSIDERATION
In any further prosecution before the examiner, we recommend that the
examiner determine if claims 9 to 13 are patentable over U.S. Patent No. 4,431,193 to
Nesbitt alone or in combination with other prior art. Any rejection of claims 9 to 13 on
prior art requires the Group Director's approval (see MPEP § 2307.02) since these
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