Appeal No. 2003-1615
Application No. 09/274,639
OPINION
For the reasons set forth below, we reverse each of the
rejections.
I. The 35 U.S.C. § 112, second paragraph, rejection
On page 3 of the answer, with regard to claim 9 (and
claim 13 because claim 13 depends upon claim 9), the examiner
states “it is unclear as to what structural limitation
applicant is attempting to recite and where it is shown in
the drawings. Where the gap or space is shown in the
drawings, and how the gap or space is related at all to the
sheet as it appears that the sheet by itself does not contain
any gap or space therebetween.”
We note that the purpose of the second paragraph of
Section 112 is to basically ensure, with a reasonable degree
of particularity, an adequate notification of the metes and
bounds of what is being claimed. See In re Hammack, 427 F.2d
1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
The examiner’s position (as quoted above) does not
address whether or not appellant’s claims 9 and 13 provide
for an adequate notification of the metes and bounds of what
is being claimed. In fact, it appears that the examiner’s
position is directed to the first paragraph of Section 112.1
We also note that the examiner bears the initial burden
of presenting a prima facie case of unpatentability, whether
1 The first paragraph of Section 112 concerns whether the original
disclosure reasonably conveys to one of ordinary skill in the art
that, as of the time of the filing of the present application, the
inventors had possession of the subject matter as now claimed. In
re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978).
In other words, the query is whether the concept is present in the
original disclosure. In re Anderson, 471 F.2d 1237, 176 USPQ 331
(CCPA 1973). This issue is not before us.
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