Appeal No. 2006-1612 Page 3
Application No. 10/153,376
reasoning in support of the rejection and to the appellant's brief (filed October 26,
2005) for the appellant's arguments.
OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow.
Rejection under 35 U.S.C. § 112, first paragraph
The examiner rejected claims 1-8 because the specification, as originally
filed, fails to provide antecedent basis for the recited claim language, “said female
profile being partially cylindrical through greater than 180 degrees.” The examiner
asserts that it is unclear from the drawings that applicant intended the female
profile to be partially cylindrical through greater than 180 degrees, since the
originally filed specification fails to mention the drawings as being to scale.
(Examiner’s Answer, p. 3). The appellant argues that it is irrelevant whether the
drawings are to scale, because the angle remains the same regardless of scale of the
drawings. (Appellant’s Brief, p. 5). The appellant also points to Figures 2, 3, 4,
5A and 5B and page 4, lines 20-21 of the specification for support of the claim
limitation.
We hold that the specification and drawings, as originally filed, provide
sufficient support for the disputed claim language. The factual inquiry for
determining whether a specification provides sufficient written description for the
claimed invention is whether the specification conveys with reasonable clarity to
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