Appeal No. 2003-1337
Serial No. 08/480,411
The examiner argues that the declaration fails to overcome
Pray because to do so the declaration needs to show not just a
braid having a variable pick count, but a braid having fewer
picks per inch at the proximal end than at the distal end, since
this is what is recited in the appellants’ claims (answer,
page 8).
The examiner’s argument is that the declaration must show
written descriptive support for the claimed invention under
35 U.S.C. § 112, first paragraph. A showing under 37 CFR § 131,
however, does not have to show adequate support for the claimed
invention under 35 U.S.C. § 112. See In re Clarke, 356 F.2d 987,
991, 148 USPQ 665, 669 (CCPA 1966); In re Hostettler, 356 F.2d
562, 565, 148 USPQ 514, 516 (CCPA 1966). All that is required of
a Rule 131 declaration is that it must show possession, before
the effective date of the reference, of subject matter which at
least would have rendered obvious to one of ordinary skill in the
art so much of the claimed invention as the reference shows. See
In re Rainer, 390 F.2d 771, 774, 156 USPQ 334, 336 (CCPA 1968);
Clarke, 356 F.2d at 992, 148 USPQ at 670; In re Stempel, 241 F.2d
755, 759, 113 USPQ 77, 81 (CCPA 1957).
Pray discloses a microtube having a relatively stiffer
proximal end and a relatively more flexible distal end,
comprising an inner cured resin layer (24), a braid layer (52)
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