Appeal No. 2005-1013
Application 09/767,155
necessarily has “a diameter less than the cylindrical container,”
as now set forth in claim 1 on appeal. Although the
specification, at page 4, mentions a problem with the prior art
design concerning the difficulty of creating an initial puncture,
and indicates that such a problem is compounded with the trend
towards downsizing the lid diameter, we find nothing in the
application regarding the relative diameter of a lid and the
cylindrical container on which it is to be used.
Moreover, even if we assume, as appellants have indicated on
page 10 of the brief, that a lid having a diameter less than the
diameter of a cylindrical container is currently widely known in
the art, we note that this fact alone is not a sufficient
indication to one of ordinary skill in the art that such was in
fact part of appellants’ invention at the time of filing the
present application. See, e.g., In re Barker, 559 F.2d 588, 591,
194 USPQ 470, 474 (CCPA 1977) and also Lockwood v. American
Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed
Cir. 1997), wherein the Court indicates that
Entitlement to a filing date does not extend to
subject matter which is not disclosed, but would be obvious
over what is expressly disclosed
and that
It is not sufficient for purposes of the written
description requirement of § 112 that the disclosure, when
combined with the knowledge in the art, would lead one to
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