Appeal No. 2005-1785
Application No. 10/164,853
1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196
USPQ 465, 467 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262, 191
USPQ 90, 96 (CCPA 1976). It is not necessary that the
application describe the presently-claimed invention exactly, but
only sufficiently clearly that one of ordinary skill in the art
would recognize from the disclosure that the appellants invented
it. See Edwards, 568 F.2d at 1351-52, 196 USPQ at 467; Wertheim,
541 F.2d at 262, 191 USPQ at 96. “[T]he PTO has the initial
burden of presenting evidence or reasons why persons skilled in
the art would not recognize in the disclosure a description of
the invention defined by the claims.” Wertheim, 541 F.2d at 263,
191 USPQ at 97.
The examiner argues that “the specification as originally
filed fails to disclose activation of a user interface at least
in part by movement, when movement occurs or in response to
movement”, because “activation of a user interface occurs based
on the position of the connectors, not on movement of the
interfaces” (answer, page 4).
The originally filed specification discloses activating a
user interface initially by pressing a button on a remote
commander and then by bringing first connector 100 into or out of
contact with second connector 110 (page 5, lines 14-15; page 6,
3
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