Appeal 2007-0293
Application 10/630,982
fails to find support in the original disclosure (Answer 3 and 7). Appellant
relies on original Figure 1 as support for this language in claims 17-20
(Br. 11).
If the Examiner establishes that Appellant claims embodiments that
are completely outside the scope of the specification, then the Examiner has
met the initial burden of proof. See In re Alton, 76 F.3d 1168, 1175,
37 USPQ2d 1578, 1583 (Fed. Cir. 1996). The drawings alone may provide
“written description” of the invention as required by the first paragraph of
§ 112. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991); Ex parte Holt, 19 USPQ2d 1211, 1213 (Bd.
Pat. App. & Int. 1991).
Appellant agrees with the Examiner that shoulder 10d of shield 10
engages or “holds” the container 18, but argues that this portion engages
only the top of the container, not the threaded engagement portion (Br. 11;
see the Answer 7). However, as clearly seen in the “exploded view” of
Figure 1 attached to the Answer, we agree with the Examiner that the lower
section of the upper shield “engages and holds” by virtue of the overlapping
contact of the shield shoulder and the top portion of the threaded portion of
container 18 (Answer 7). Accordingly, we do not find any support in Figure
1 for the exclusionary language recited in claims 17-20 on appeal. We note
that Appellant has not disputed the Examiner’s analysis of the “exploded
view” of Figure 1.
For the foregoing reasons and those stated in the Answer, we
determine that the Examiner has established a prima facie case of lack of
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