Appeal No. 2003-1981 Page 9
Application No. 09/715,684
The American Heritage® Dictionary of the English Language, Third Edition 1992
by Houghton Mifflin Company (1992) defines the noun handle as "[a] part that is
designed to be held or operated with the hand." In our view, this is the broadest
reasonable meaning of the noun handle in its ordinary usage as it would be understood
by one of ordinary skill in the art taking into account the written description contained in
the appellant's specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). See also In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983).
With this definition of handle, it is our determination that the claimed handles or
handle sections are not readable on Maeda's rods 50a and 50b since Maeda's rods 50a
and 50b are not designed to be held or operated with the hand. Maeda's fishing rod
has a handle 2 and rods 50a and 50b do not constitute handles or handle sections
since a fisherman would not inherently be able to place their fingers in the space 51
between the rods. In that regard, the examiner's assertion (answer, pp. 7-8) to the
contrary is not supported by the disclosure of Maeda. It is well settled that the burden
of establishing a prima facie case of anticipation resides with the Patent and Trademark
Office (PTO). See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). When relying upon the theory of inherency, the examiner must provide a basis
in fact and/or technical reasoning to reasonably support the determination that the
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