Appeal No. 2004-0893
Application No. 09/124,310 Page 8
Here, the examiner’s concern again appears to be primarily
with appellants’ alleged unconventional use of the terms “tow bar
head” and “towbar-guided industrial truck.” However, as with the
examiner’s § 112, second paragraph rejection discussed above, the
examiner has not furnished any evidence to substantiate the
examiner’s viewpoint that appellants’ use of those terms is
unconventional. Moreover, the examiner has not specifically
addressed the specific portions of appellants’ original
specification, including the claims, and the drawings that not
only make use of those disputed terms but furnish examples of
structure that correspond thereto. Consequently, the examiner
has not met the burden if establishing why the subject matter as
called for in claims 21-28 would have been construed as
describing possession of a new concept or invention not conveyed
by the original disclosure.
Accordingly, we reverse the examiner’s stated rejection
under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 102(b)
“To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007