Appeal No. 2003-1272 Page 11
Application No. 10/039,338
Since structure supporting the claimed "traction means" is set forth in the written
description, the rejection under 35 U.S.C. § 112, second paragraph, is not appropriate.
Accordingly, the decision of the examiner to reject claims 18 to 25 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The written description rejection
We will not sustain the rejection of claims 18 to 25 under 35 U.S.C. § 112, first
paragraph.
The basis for this rejection (answer, pp. 3-4) is as follows:
the phrase "traction means" is considered to be new matter because it was
introduced into the application subsequent to the filing of the application.[7] A
means plus function recitation is construed to cover the corresponding structure,
material or acts described in a specification and equivalents thereof. Addressing
the particular facts of the present case, appellants only disclosed "ribs", with no
mention whatsoever of any alternatives or equivalents thereof at the time of the
filing of the application. Thus, one skilled in the art, reading the original
disclosure, would not have been informed of appellants' interest in or possession
of equivalents, now claimed as part of the means plus function recitation. In this
case by introducing a means plus function recitation into the present application,
subsequent to its filing date (the filing date of the original parent application),
appellants have, in effect, added to the original disclosure equivalents of the ribs.
Thus, this late introduction of a means plus function recitation adds new matter
(equivalents) to the application since the means plus function recitation lacks a
descriptive basis as to the inclusion of any equivalents in the original disclosure.
7Claims 18 to 34 were added by the preliminary amendment filed with the
application on October 29, 2001.
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007