Appeal 2006-2155
Application 10/747,179
OPINION
The rejection under 35 U.S.C. § 112, first paragraph, is reversed. The
rejection under 35 U.S.C. § 102(b) is affirmed as to claims 1-3, 8, 10, 11, and 14-
20, and reversed as to claims 4-7, 9, 12, and 13.
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner argues that the Appellant’s original disclosure does not
provide adequate written descriptive support for “stationary” and “fixed”, added by
amendment to the independent claims (1 and 14), because “stationary” and “fixed”
require the body to be permanently stationary and fixed, whereas the original
disclosure (figs. 3-5) shows that appliance 40, which is the body in the Appellant’s
claims, can be removably placed in three orientations on tee 10 (Answer 3 and 7).
As stated in Hormone Research Foundation Inc. v. Genentech Inc., 904 F.2d
1558, 1563, 15 USPQ2d 1039, 1043 (Fed. Cir. 1990), “[i]t is a well-established
axiom in patent law that a patentee is free to be his or her own lexicographer
[citation omitted], and thus may use terms in a manner contrary to or inconsistent
with one or more of their ordinary meanings. For this reason, an analysis of the
specification and prosecution history is important to proper claim construction.” If
“the specification contains a description of the claimed invention, albeit not in ipsis
verbis (in the identical words), then the examiner or Board, in order to meet the
burden of proof [of lack of adequate written description], must provide reasons
why one of ordinary skill in the art would not consider the description sufficient.”
In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996).
The Appellant’s original disclosure (figs. 3-5) shows that once appliance 40
is placed in tee 10, it is stationary and at a fixed location until it is removed. The
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