Appeal 2006-1207
Application 10/354,491
reference to the description.” 37 CFR § 1.75(d)(1). We also note the
limitation in question appears in original claim 14. Claims filed in the
original Specification are part of the disclosure. Therefore, if an application
as originally filed contains a claim disclosing material not disclosed in the
remainder of the Specification, the applicant may amend the Specification to
include the claimed subject matter. In re Benno, 768 F.2d 1340, 1346,
226 USPQ 683, 686-687 (Fed. Cir. 1985). Appellant should submit an
amendment to correct the above-noted omission and thereby comply with
37 CFR § 1.75(d)(1).
In addition, claim 24 recites “wrapping a fabric over the wrapped joint
tape to provide hoop reinforcement to the first and second pipe segments at
the cut-back regions.” In our review of the Specification, we find the
following disclosure concerning the step of wrapping fabric: “[a] woven
fabric [can be] wrapped circumferentially around the joint to prevent
circumferential cracking during subsequent cure of the [composite]
reinforcement joint tape” (Spec. 2). However, the above noted claim
limitation appears to lack descriptive support with respect to providing
“hoop reinforcement to the first and second pipe segments at the cut-back
regions.”
In any future prosecution that may occur, Appellant and the Examiner
should address whether and how this limitation complies with the written
description requirement of the first paragraph of 35 U.S.C. § 112.
CONCLUSION
The Examiner’s rejection of claims 14, 15, 17, 18, 21, and 22 under
35 U.S.C. § 102(b) as being anticipated over Wilhelm is affirmed.
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