Appeal No. 2003-1640
Application 09/634,692
defined by the limitations specified in appealed independent claims 16 and 25. Appealed claims
23 and 25 encompass certain limitations with respect to a rudder trim adjustment assembly of the
steering assembly.
The references relied on by the examiner are:
Pelletier 4,231,309 Nov. 4, 1980
Carré et al. (Carré) 2 613 318 Oct. 7, 1988
(published French Patent Application)
The examiner has advanced the following grounds of rejection on appeal:
claims 18, 20, 21, 23 and 25 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (answer, pages 3-5);
claims 1, 3 and 8 stand rejected under 35 U.S.C. § 102(b) as anticipated by Pelletier (answer,
page 6); and,
claims 16, 17 and 27 stand rejected under 35 U.S.C. § 102(b) as anticipated by Carré (answer,
page 6).
Appellant does not group the appealed claims in the brief.1 Accordingly, we decide this
appeal based on appealed claims 1, 16, 18, 20, 21, 23 and 25. 37 CFR § 1.192(c)(7) (2003).
We reverse.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellant’s brief and reply brief for a complete
exposition thereof.
Opinion
It is well settled that the examiner has the burden of making out a prima facie case that
the appealed claims do not comply with § 112, first paragraph, written description requirement,
by setting forth evidence or reasons why, as a matter of fact, the written description in appellant’s
disclosure would not reasonably convey to persons skilled in this art that appellant was in
possession of the invention defined by the claims, including all of the limitations thereof, at the
time the application was filed. See generally, In re Alton, 76 F.3d 1168, 1172, 1175-76,
37 USPQ2d 1578, 1581, 1583-84 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 262-64,
191 USPQ 90, 96-97 (CCPA 1976). It is further well settled that while the written description
1 We consider the brief filed March 20, 2003 (Paper No. 22).
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