Appeal No. 2006-0859
Application No. 09/778,338
I. Whether the Rejection of Claims 7 and 9-11 Under 35 U.S.C. § 112 is
proper?
It is our view, that the language of claim 7 does not contain the antecedent basis
problems listed by the Examiner as these features are inherent to the claimed rotating
machine and an artisan would recognize such.
Further, the language of the claim is not unclear to the point of being indefinite.
Rather, Applicant has left unsaid a number of facts that would have greatly aided this
Board (and apparently the Examiner) in more readily understanding the claimed
invention. We list those facts at Findings 10-16 above. Since the Board was able to
eventually deduce the structure being claimed, we are unable to say that an artisan
would do less. Accordingly, we reverse.
However, should there be further prosecution, we recommend that the Examiner
require Applicant to amend the specification to add further drawings showing the
structural relationship recited in claim 7 (see figure 3 of De Filippis or figure 7b of
Sakashita as examples) and detailed description to make explicit the information of
Findings 10-16 above.
II. Whether the Rejection of Claim 1 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would have suggested to one of ordinary
skill in the art the invention as set forth in claim 1. Accordingly, we affirm.
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