Appeal No. 2006-0806
Application 09/954,807
be accepted at face value as admissions that Figs. 1 and 2 may be considered “prior art” for any
purpose, including use as evidence of obviousness under § 103. [Citations omitted.] By filing an
application containing Figs. 1 and 2, labeled prior art, ipsissimis verbis, and statements
explanatory thereof, appellants have conceded what is to be considered as prior art in
determining obviousness of their improvement.”). The electret treatment of a nonwoven fabric
was known in the art at the time this application was filed as evinced by Midkiff (col. 8).
Furthermore, in view of the issues thus raised by appellants’ acknowledged prior art, we
decline to exercise our authority under 37 CFR § 41.50(b) (2005) and enter on the record a new
ground of rejection of claims 30 and 31, presented in the amendment filed March 11, 2003,
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description
requirement. These product claims encompass any article that is in contact with the protective
material encompassed by claim 1 or located within a storage sleeve encompassed by claim 29,
respectively. We fail to find any disclosure in the written description in the specification as filed
which would reasonably convey to a person skilled in this art that appellants were in possession
of the invention defined by these claims including all of the limitations thereof, at the time the
application was filed. Indeed, we find that, prima facie, the written description of the
specification would have conveyed to this person that appellants’ invention is the protective
wrap or sleeve per se, and not an article protected therewith. Thus, as a matter of fact, these
claims encompass embodiments which are completely outside the scope of the specification. See
generally, In re Alton, 76 F.3d 1168, 1172, 1175-76, 37 USPQ2d 1578, 1581, 1583-84 (Fed. Cir.
1996), citing In re Wertheim, 541 F.2d 257, 262-64, 191 USPQ 90, 96-97 (CCPA 1976).
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to (1) require appellants to submit information under 37 CFR
§ 1.105(a)(1)(vii) (2005) with respect to the acknowledged commercial product, and determine
whether such information provides sufficient evidence along with Midkiff and/or any other
applicable prior art the examiner deems appropriate, on which to base a new ground of rejection
of the appealed claims under 35 U.S.C. § 103(a); (2) enter on the record a new ground of
rejection of claims 30 and 31 under 35 U.S.C. § 112, first paragraph, written description
requirement, that we have set forth above; and (3) enter any other ground(s) of rejection the
examiner deems appropriate.
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