Appeal 2007-0512
Application 10/310,744
claimed subject matter is patentably indistinct over the patentee's claimed
subject matter, and vice-versa, under 37 C.F.R. § 41.203(a) (commonly
known as the "two-way test"); but they do not have to fight the additional
battle of showing that their originally filed specification supports their novel
use of the patentee's term. In cases such as this, where, perhaps, a broad
construction of the term "three channels" might encompass their disclosed
nozzle having a narrow section adjacent to wide sections on either side, the
applicants, even if successful in surmounting the written description
threshold, would still have to show that the "two-way test" is satisfied. That
is, that the provision of multiple openings of adjacent pipes taught by
patentees would have been recognized by those of ordinary skill in the art as
obvious over a single opening with variations in flow across the opening
taught by applicants, and vice-versa. Such a showing requires evidence, not
mere attorney argument.
The Examiner's approach has been commendable. Rather than
permitting patentability decisions to be shifted into an interference, the
Examiner has dealt with them during ex parte prosecution. Moreover, he
has supported both of his rejections with evidence and sound reasoning.
And, while tackling the often patent-law technical issues surrounding written
description, he endeavored not to let procedural technicalities slow down the
appeal process. (See the Answer at 9-10, providing Appellants the
opportunity to complete the record while responding to their substantive
arguments, rather than delaying matters by insisting on an amended Appeal
Brief.) Even had we reversed and proceeded to declare an interference, the
Examiner's approach, namely, to resolve issues of patentability during ex
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