Appeal 2007-0512
Application 10/310,744
column 4, l. 33; and in all of that discussion, channels are defined by interior
walls in the nozzle in addition to the exterior walls of the nozzle. We
observe that during prosecution the Examiner and the Appellants traded
dictionary definitions of the word "channel." See, e.g., arguments filed with
the amendment filed 18 May 2004, at 13 (citing Webster's New Universal
Unabridged Dictionary, 2d ed. (1983); Answer at 7, evidently quoting (but
not citing) Webster's 3d Int'l Dictionary. Although claim terms are to be
given their broadest reasonable interpretation consistent with the original
disclosure, the introduction of a term not previously used raises other issues,
particularly when that term is introduced to provoke an interference with an
issued patent.
In the present case, it would seem, Appellants believe they should be
the senior party in an interference with Henegar, and they introduced
claims 26–42 for that purpose. (Request by Applicant for Interference with
Patent Under 37 C.F.R. § 1.607, filed 24 April 2004, at 18.) Appellants
have declined the Examiner's invitation to use their own terminology and to
argue that such claims interfered with the claims of Henegar. (See, e.g.,
Final Rejection mailed 13 June 2005, paragraph bridging 3-4; Answer
at 7-8.) The difficulty for Appellants, however, is that obviousness does not
serve as a proxy for written description. Lockwood v. American Airlines,
107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) (“Entitlement
to a filing date does not extend to subject matter which is not disclosed but
would be obvious over what is expressly disclosed. It extends only to that
which is disclosed . . . The question is not whether a claimed invention is an
obvious variant of that which is disclosed in the specification. Rather, a
prior application itself must describe an invention, and do so in sufficient
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