Appeal No. 2006-2023 Page 12
Application No. 10/650,785
Because the ‘044 application does not contain adequate written description for
the entire scope of appealed claim 1 within the meaning of 35 U.S.C. § 112, ¶1,
appealed claim 1 is not entitled to the earlier filing date of the ‘044 application. Mueller
is therefore available as prior art.
The next question is whether Mueller anticipates the subject matter of the
appealed claims. As noted earlier, the appellants do not dispute the examiner’s factual
findings that Mueller describes each and every limitation of the appealed claims.
Accordingly, we uphold the examiner’s rejection as to claims 1-16.
2. Group II (Claims 17-26)
Claim 17, which is representative of Group II, recites:
17. An apparatus for treating drinking water comprising:
a process tank for receiving water;
an ion-exchange resin supply operatively associated with the
process tank to provide ion-exchange resin to water within the
process tank;
a membrane filter operatively associated with the process tank for
separating particulate matter from treated water removed from the
process tank through the membrane filter; and
a supply of regeneration solution for regeneration of the ion-exchange resin.
As discussed above with respect to appealed claim 1, the entire disclosure of the
‘044 application is directed to a treatment apparatus that is capable of dispersing the
ion-exchange resin. Claim 17, which was added after the filing of the application on
appeal, does not recite any limitation that renders the apparatus capable of dispersing
the ion-exchange resin. Thus, the ‘044 application does not contain adequate written
description for the invention as now broadly recited in appealed claim 17. Cooper
Cameron Corp. v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317, 1323, 62 USPQ2d
1846, 1851 (Fed. Cir. 2002)(“[I]n Gentry, we applied and merely expounded upon the
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