Appeal No. 2004-1448
Application No. 09/454,723
recharged. (Answer at 4-5.) Appellants refer to a technical dictionary definition as
support for the position that a “primary battery” is “one that is non-rechargeable.” (Brief
at 3.) Appellants have also attached an expert’s (Sidman) declaration (37 CFR § 1.132)
to show that one skilled in the art “would not consider ‘rechargeable battery 32’ [of
Shopp] to be a ‘primary battery.’” (Sidman dec. at ¶ 2.)
The technical dictionary definition relied upon by the examiner establishes that
the electro-chemical reactions of some “primary” batteries may be reversible to some
extent. Appellants do not appear to dispute that contention. Nor does the declaration
submitted by appellants appear to adhere to a contrary position.
However, the instant claims do not set forth any express limitations with respect
to “reversibility.” The actual issue in controversy is whether the artisan would have
considered “rechargeable battery 32” described by Shopp as falling within the meaning
of the term “primary battery,” as used in instant claim 37, as opposed to whether the
artisan would have recognized that some primary batteries may be rechargeable to
some extent (i.e., have reversible electro-chemical reactions). In our view, appellants’
evidence is sufficient to establish that the artisan would not have considered
“rechargeable battery 32” of Shopp to be a “primary battery.”
However, in the Supplemental Answer the examiner also asserts that Shopp’s
disclosure of battery 32 being rechargeable is merely exemplary. Shopp also describes
the invention in the following terms.
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