Appeal 2006-2404
Application 10/884,619
In re Cormany, 476 F.2d 998, 1000-02, 177 U.S.P.Q. 450, 451-53 (C.C.P.A.
1973); In re Borkowski, 422 F.2d 904, 909, 164 U.S.P.Q. 642, 645-46
(C.C.P.A. 1970); and In re Prater, 415 F.2d 1393, 1404, 162 U.S.P.Q. 541,
550 (C.C.P.A. 1969). On the facts in this record, we agree with Appellant
that the invention is using “open spherical balls having internal ribs” as the
packing material in a counter-current air stripper, with Jaeger Tri-Packs
exemplary of this type of packing. The statement quoted by the Examiner
(Answer 2) merely reiterates this same fact, namely that the stripper must
employ spherical balls as packing, as exemplified by packing known as
Jaeger Tri-Packs. As correctly argued by Appellant, support for this fact
resides throughout the original specification and claims. See the “Summary
of the Invention” (Specification 5, ll. 24-25) and original Claim 1. Although
Appellant teaches that the selection of the packing is “critical to the
performance of an air stripper,” the specification clearly is not limited to
Jaeger Tri-Packs (Specification 6, l. 16). Accordingly, we determine that the
Examiner has not met the burden of proof in establishing that Appellant
intends the claims to be of a different scope. Therefore, we cannot sustain
the rejection of claims 1-6 under the second paragraph of § 112.
The subject matter of claim 7 presents a different issue. As discussed
above, we agree with Appellant that the invention is regarded as the use of
“open spherical balls with internal ribs” as packing in a counter-current air
stripper to remove MTBE from an aqueous solution. However, claim 7
recites that the air stripper contains a “packed column” but never specifies
what packing is employed (see claim 7, l. 2). Appellant recognizes that
claim 7 does not restrict the packing material to the open spherical balls
having internal ribs (Br. 2-3). However, this summary of claim 7 is
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