Appeal No. 2004-0051
Application No. 09/746,795
slot and pin and a link pivotally connecting the lever to advance
the ring engaging surface and compress the retaining ring that
constitutes the “basic approach” of the inventor’s method and tool,
not the location of the slot (Brief, pages 13-14; Reply Brief, page
2). Finally, appellant cites In re Vickers and Gentry Gallery v.
Berkline Corp.2, arguing that the slot 84 in this appeal is not an
essential element of the invention (Reply Brief, pages 2-4).3
Appellant’s arguments are not persuasive. Contrary to
appellant’s interpretation of claim 18 as a broad generic claim, we
determine that claim 18 specifically recite two species, one with
the slot in the handle lever and one with the slot in the
compressing lever. Since the “slot in the compressing lever”
species is not disclosed in the original specification or claims,
there is no compliance with the written description requirement of
2141 F.2d 522, 61 USPQ 122 (CCPA 1944) and 134 F.3d 1473, 45
USPQ2d 1498 (Fed. Cir. 1998), respectively.
3Many of appellant’s arguments in the Brief are directed to
the issue of enablement (e.g., see pages 12 and 16). We need not
respond to these arguments other than to note that the examiner’s
rejection is solely directed to the written description
requirement of section 112, first paragraph, and the enablement
requirement is separate and distinct from the written description
requirement. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991)..
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007