Appeal 2005-2547
Application 10/134,817
atmospheric pressure are “low-pressure pumps” while pumps that operate at
higher pressures are “high-pressure pumps.” That some “high-pressure”
pumps in horizontal drilling usually operate between 50 and 100 bar or even
higher does not contradict the statement that a pump operating at about 1.5
atmospheres will also be termed a “high-pressure” pump.
The evidence as a whole supports the conclusion that “high pressure,”
as applied to pumps used in horizontal drilling, has a reasonably precise
meaning in the art. Mathematical precision should not be imposed for its
own sake; Appellant may claim the invention in terms that would be
understood by persons of skill in the field of the invention. Modine Mfg. Co.
v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1557, 37 USPQ2d 1609, 1617
(Fed. Cir. 1996).
With regard to the scope of pressure required by “a pressure sufficient
to feed a horizontal drill head via a drill string” as recited in claim 21, the
Examiner contends that the Specification provides no example of any
pressure which would or would not satisfy this limitation (Answer 5). But
the Examiner does not state why an example is required. It would seem that
those of ordinary skill in the art would have understood what pressures are
required to feed a horizontal drill head via a drill string.
We conclude that the there is a reasonable basis to believe that the
ordinary artisan in the art of horizontal drilling would be able to determine
the scope of the claims.
B. Lack of Written Descriptive Support under 35 U.S.C. § 112, ¶ 1
Claims 17, 18, 21, and 22 are rejected under 35 U.S.C. § 112, ¶ 1 as
lacking written descriptive support. According to the Examiner:
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