Appeal No. 2004-0140
Application No. 10/154,729
“that in every case where the description of the invention in the specification is
narrower than that in the claim there has been a failure to fulfill the description
requirement in section 112.” In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279,
284 (CCPA 1973). Instead, the court stated, “[e]ach case must be decided on its
own facts.” Id.
The appellants’ claims require a forming step and a bonding step, in no
particular order. The appellants’ provisional application states that the two bonding
methods currently used are shrink fit and diffusion bonding, and indicates that in
each of those techniques a forming step takes place before the bonding step (page
1). Hence, one of ordinary skill in the art would have recognized from the
provisional application that the appellants were in possession of a method that
includes both the forming step and the bonding step required by the present claims.
Although the claims encompass bonding before forming, that sequence is not
required by the claims. The claims merely require a bonding step and a forming
step, and the provisional application discloses methods that include those steps.
In both of the methods disclosed in the provisional application, two layers are
machined to a minimum difference between the inside diameter of the outer layer
and the outside diameter of the inner layer, and then the formed layers are bonded
together. Thus, there is a potential issue under 35 U.S.C. § 112, first paragraph, of
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