Appeal No. 2006-0465
Application 10/445,707
We refer to the answer and to the brief2 and reply brief for a complete exposition of the
positions advanced by the examiner and appellants.
The grounds of rejection under § 112, first and second paragraphs, are directed to the
sixth clause of representative claim 1 to which we add other language of the claim for context:
each said [spaced] arm [having one end from which an associated one of said plungers
is suspended,] being connected at its other end to one of said servo controlled
actuators [mounted adjacent to each other on one side of said forehearth for movement
linearly in directions parallel to said axes of said plungers,] such that said arms are
parallel to each other as viewed from a horizontal direction and remain parallel to each
other as viewed from a horizontal direction throughout movement of said actuators,
said arms and said plungers.
With respect to the rejection under § 112, second paragraph, the examiner contends that
the language “arms are parallel to each other as viewed from a horizontal direction” is “unclear
as to whom is doing the viewing and from what distance” (answer, page 12). With respect to the
rejection under § 112, first paragraph, written description requirement, the examiner contends
that the same language is not explicitly supported, and that while “there is support for the arms
being parallel, there is no suggestion of this ‘viewing’ limitation,” through which the claim
encompasses “arms that are not parallel, even though they might appear to be so,” and excludes
“arms that are parallel even though one cannot view” all (id., page 11).
Appellants submit, with respect to both of these grounds of rejection, that the component
arms 15 are described in the written description in specification, including the Figures, as
horizontal, and this disclosure further describes this component and the component actuators 17
and plungers 12 to be “parallel” as this term is commonly used in context (brief, pages 7-9). The
examiner responds that the “claims do not require the arms to be actually parallel” only to be
viewed as such (answer, pages 18-19). Appellants reply that “parallelism is a matter of
geometry” and not “eyesight” (reply brief, page 4).
We first consider the ground of rejection of appealed claims 1 and 13 under 35 U.S.C.
§ 112, second paragraph. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The initial burden of establishing a prima facie case on any ground under the second paragraph
of § 112 rests with the Examiner. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
2 We consider the brief filed March 14, 2005.
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