Appeal 2006-2721
Application 09/579,938
valves 7,8 and levers 13,14 (Reed, e.g., col. 5, ll. 11-37, and Figs. 1 and 3).
We find the stirring devices extend through the lids of vessels 24,27 and can
include rods 112 with a plurality of vanes 113 (Reed, e.g., col. 5, l. 50, to
col. 6, l. 47, and Figs. 2, 5, and 6).
With respect to the ground of rejection under § 112, first paragraph,
written description requirement, the Examiner has not set forth evidence or
reasons why, as a matter of fact, the written description in Appellant’s
disclosure would not reasonably convey to persons skilled in this art that
Appellant was in possession of the invention defined by the claims,
including all of the limitations thereof, at the time the application was filed.
See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76, 37 USPQ2d 1578, 1581,
1583-84 (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262-64, 191
USPQ 90, 96-97 (CCPA 1976)). Indeed, the Examiner’s argument is
premised on lack of enablement for the claimed apparatus, and as Appellant
contends, the dispensing mechanism as claimed must only permit a paint to
flow there through. The determination of the size of the dispensing
mechanism necessary for any particular paint is within the ordinary skill in
this art and need not be specifically set forth in the Specification. See, e.g.,
In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691 (CCPA 1981) (“An
inventor need not . . . explain every detail [of the invention] since he is
speaking to those skilled in the art. What is conventional knowledge will be
read into the disclosure.”).
Accordingly, in the absence of a prima facie case, we reverse the
rejection of claims 29 through 33 under 35 U.S.C. § 112, first paragraph,
written description requirement.
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